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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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
The future of the European Unified Patent Court (UPC) appears to look a bit clearer following recent ratification activities. On 16 January 2017, the Preparatory Committee for the UPC announced on its website that it is working under the assumption that the UPC can become operational in December 2017.
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