09. Feb 18

No registration of “Bester Papa” as EU trade mark due to lack of distinctiveness

In order for a trade mark to be capable of being registered as a European Union trade mark it needs to be highly distinctive. The slogan “Bester Papa” (“Best dad(dy)/papa”) lacks this distinctive character.

The protection afforded by a trade mark is vitally important to businesses. Among consumers, trade marks give rise to a high level of brand recognition. Registering a trade mark also affords protection from competitors who would otherwise be able to benefit from its success. That being said, not every mark can be registered as a trade mark. We at the commercial law firm GRP Rainer Rechtsanwälte note that registration requires a highly distinctive character. That is why, for instance, the General Court of the European Union rejected the registration of the mark “Bester Papa” as an EU trade mark in its judgment of September 15, 2017 (Az.: T-451/16).

Cups, t-shirts etc. with the inscription “Bester Papa” or “Beste Oma” (“Best grandma/granny”) are very popular as gifts or tokens of recognition. For this reason, one company wanted to register the word mark “Bester Papa” as an EU trade mark. However, the European Union Intellectual Property Office (EUIPO) completely rejected its registration. In justifying its decision, it stated that the mark lacked the necessary distinctive character, and that consumers would consider the two words commonplace and merely a promotional message. It went on to say that no part of the mark was capable of being interpreted by consumers as an indication of the goods’ commercial origin.

The company was unsuccessful in bringing a legal challenge against this decision. The General Court shared the view of the EUIPO. The mark was said to be a classic slogan expressing praise and personal affection. The Court held that this combination of words is a commonplace expression that is familiar to consumers in a number of contexts. It ruled that there is no need for several associated logical steps in order to understand the mark as an expression of personal affection. The Court noted that the goods are, after all, suitable as gifts, and that this combination of words is perceived by the relevant public as nothing more than a promotional slogan. The General Court concluded that there was a lack of distinctiveness distinguishing the goods from products of other producers. Due to this lack of distinctive character, it was not possible to register the mark as an EU trade mark.

Lawyers who are experienced in the field of intellectual property law can advise businesses on registering trade marks as well as enforcing claims in the event of trade mark violations.

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