The Federal Patent Court decided in a recently published decision that the designation "Der kleine Eisbär" ("The little Polar Bear") is registrable as a word mark for "recorded data carriers, exposed films and printed matters". Der kleine Eisbär is a cartoon character which is very popular, especially among children, in Germany.
The German Patent and Trade Mark Office had rejected the application for several goods and services due to a lack of distinctiveness. The Office thought that the relevant public would understand the designation as a mere description of contents and not as an indication of origin. The applicant appealed successfully against that decision.
The Federal Patent Court said that the designation Der kleine Eisbär was not a mere description of contents but a fantasy title that was distinctive with respect to the relevant goods and services according to section 8 para. 2.1 of the German Trade Mark Law (Markengesetz). It held that the designation did not relate only to goods (eg recorded films or printed matters) that dealt with young or little polar bears, but to a concrete individual, namely the cartoon character Der kleine Eisbär. The court, therefore, thought that the relevant public would understand Der kleine Eisbär to be an indication of the origin of the company that produces the goods and services in connection with the animal character. As a result, the Court held that the trade mark was not descriptive and did not lack the ability to distinguish the goods and services of one company from those of another. It was not relevant whether the trade mark had been accepted among the relevant trade circles.
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Victoria Plumbing had been using VICTORIAN PLUMBING in parallel to Victoria Plum's use of VICTORIA PLUMB, for 15 years. Both parties had been using their respective marks for retail of bathroom products.
Choosing the ideal brand name is no mean feat. For it to be truly valuable to your business, it needs to be registered as a trade mark, but this is easier said than done.
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