Now that the time of the year has come, it seems like everything is all about finding the perfect gift, decorating your house in the most beautiful Christmas colors, baking Christmas cookies and of course, going to Christmas markets. But even while we are enjoying the peaceful and contemplative atmosphere – and obviously to drink one or the other mulled wines we are not spared from being confronted with the German trademark law. Insofar we would like to conclude this year with a decision of the German Patent Court which dates back to 2006, but which perfectly fits into the advent and Christmas season.
“Christkindlesmarkt” was registered as a German trade mark with the German Patent and Trademark Office (GPTO) for, among others, non-alcoholic and alcoholic beverages. On 10 December 2003, the GPTO cancelled this trade mark based on absolute grounds after a third party had lodged a cancellation request with the GPTO. The examiner of the GPTO took the view that the mark was not eligible for trademark protection, as the relevant public would perceive the mark only as an indication of goods offered on Christmas markets, which are also known as Christkindlesmarkt. The lovely street markets associated with the celebration of Christmas during the four weeks of advent have their origin in the South of Germany, but are now being held all over Germany. Accordingly, the German public would perceive products labeled with the term Christkindlesmarkt only as products which are typically offered on such Christmas markets, but not as an indication of origin for a specific undertaking. Therefore the mark should never have been registered with the GPTO.
The owner of the mark disagreed and filed a complaint against this cancellation decision with the German Federal Patent Court. The owner took the view that although Christmas markets are called “Christkindlesmarkt” in the South of Germany, this could only prevent registration of the mark for services like organizing and performing such Christmas markets, but not for the so labeled goods in question.
According to Section 8 (2) No. 1 of the German trade mark law (MarkenG), trade marks shall be excluded from registration which are devoid of any distinctive character for the goods or services. Accordingly, only marks with a distinctive character by their nature or by the use made of them are capable of distinguishing their goods from the goods of other undertakings and thereby capable of registration.
In this regard the German Federal Patent Court shared the opinion of the GPTO, namely that the mark in question did not fulfill the requirements of distinctiveness. It held that the term “Christkindlesmarkt” represented only a common synonym for the word “Christmas market”. The German Federal Patent Court concluded that the mark lacked distinctive character as the relevant public (in this case, the average German-speaking consumer) understood the sign Christkindlesmarkt as referring to Christmas markets (particularly to products sold on such markets). There was however no evidence that the general public would perceive the trade mark as a source-related indication of the goods and services in question. Traditionally held in the town square, Christmas markets have food, drink and seasonal items from open-air stalls accompanied by traditional singing and dancing. Popular attractions at these markets are candied and roasted almonds, traditional Christmas cookies such as Lebkuchen and of course the famous German Bratwurst. One of the other highlights of these markets is the mulled wine called Glühwein. This means in effect that when foods and beverages are labeled with the name “Christkindlesmarkt”, the public will not perceive this as an individual indication of origin of an undertaking, but rather that these goods are typical goods offered on Christmas markets.
The decision is in line with settled case law, therefore it did not come as a surprise. The term “Christkindlesmark” is in itself descriptive and lacks of sufficient distinctive character.
We wish you all a Merry Christmas and Happy Holidays!