‘MÄDELSABEND’ – No Distinctiveness for Sweets?

At the core of the decision ‘Mädelsabend’ is the demarcation from the decisions of the German Federal Court of Justice (BGH) on ‘#darferdas?’ of June 21, 2018 (BGH I ZB 61/17) and January 30, 2020 (BGH I ZB 61/17) as well as the related preliminary ruling of the Court of Justice of the European Union (CJEU) of September 12, 2019 (EuGH C-541/18, EuGH preliminary ruling).

In the course of this appeal decision, the German Federal Patent Court (BPatG) had to decide whether the sign ‘Mädelsabend’ (Girls‘ Evening) was eligible for registration for the following goods: “confectionery; fruit gums; foam sugar; liquorice; chewy sweets”. The requested goods are marketed in a tubular bag packaging printed with the graphically highlighted designation ‘Mädelsabend’.

Registration had previously been refused by two decisions of the German Patent and Trademark Office (DPMA) in the registration and reminder procedures due to lack of distinctiveness under Section 8 (2) No. 1 MarkenG (Trademark Law). The BPatG has now confirmed these decisions in the appeal also on the grounds of lack of distinctiveness:

Distinctiveness within the meaning of Section 8 (2) No. 1 MarkenG is the (concrete) ability of a sign to be perceived by the relevant public as an indication of commercial origin. The main function of a trademark is to guarantee the identity of origin of the goods and services in question. In the assessment of the grounds for refusal, the perception of the relevant domestic public is decisive, namely the perception of the average consumer who is normally informed and reasonably observant and circumspect. Lack of distinctiveness shall be presumed where

      • the relevant consuming public, in connection with the goods and services claimed, associates with the sign only a descriptive conceptual content that is predominant.

      • the sequence of words of a claimed sign, either on its own or in connection with product-descriptive indications, contains only recommendations and promotional statements of a general nature.

      • the details of a sign refer to circumstances which, although not directly relevant to the goods and services claimed, establish a close descriptive link with the goods and services concerned.

According to the Federal Patent Court, the trademark applied for is devoid of distinctive character, at least with regard to the latter aspect: The term ‘Mädelsabend’ is a composite of the two nouns ‘Mädels’ – colloquially for girls – and ‘Abend’ – evening – in the German language, which is immediately understandable and as such can be lexically proven. The term refers in a casual manner to a friendly get-together of women in the evening. In the Senate’s view, it can be left open whether the consumption of alcoholic beverages is in the foreground at such a meeting. (The appellant had stated that the (associative) factual connection indicated by the Trademark Office could only be assumed – if at all – because of advertising, etc. with ‘alcoholic beverages’.) Apart from the choice of drinks, it is particularly common at such gatherings to offer and consume sweets and munchies. On that basis, the relevant public will immediately and without further reflection understand the requested designation in connection with the goods claimed as an indication that the goods so designated are intended and suitable for consumption at a ‘girls’ evening’. Moreover, the designation could be understood as an indication that the goods so designated are particularly suitable as a guest gift or souvenir for a ‘girls’ evening’. This was also confirmed by the BPatG through various relevant research results.

Furthermore, the BPatG has made a clear differentiation from the ‘#darferdas?’ decisions of the BGH and the related preliminary ruling of the European Court of Justice (CJEU) (see above):

The BPatG pointed out that the factual starting position of the matter to be decided here was fundamentally different from that of ‘#darferdas?’. The slogan ‘#darferdas?’ had been registered for goods in Class 25, namely “articles of clothing, in particular T-shirts; footwear, headgear”.

The BPatG had already stated on the question of protectability of the slogan that neither a descriptive content in relation to the goods claimed could be inferred from the mark applied for, nor was it apparent that there was a close descriptive connection to the goods applied for. Nor is it obviously a question of such an advertising slogan or a general promotional statement, which is understood exclusively as sales promotion, or only as a statement with a generally understandable positive connotation – which is therefore always devoid of distinctive character. In the context of the referral to the CJEU, the focus was rather on the question whether, in addition to the most probable form of use, other practically significant and obvious forms of use should also be taken into account when assessing distinctiveness. In the case of clothing, the sign could be used not only, for example, as a front print, but also on the sewn-in label on the inside. With such a label design, the public would normally expect an indication of origin.

In summary, the case-law of the CJEU and the BGH could be understood to mean that the protectability of a sign can be affirmed if it is affixed to the goods where the public usually expects an indication of origin to be affixed and therefore understands it there as an indication of origin. However, according to the BPatG, this should not be understood to mean that this applies independently of the concrete sign. The aforementioned presumption is precisely not applicable to signs which belong to the usual groups of cases in which distinctiveness per se must be denied. Any other interpretation would amount contra legem to the removal of the ground of refusal for lack of distinctiveness. The assumption that a sign which is descriptive of a product within the meaning of Section 8 (2) No. 1 MarkenG and is therefore not distinctive could acquire distinctiveness through the concrete nature of its use alone cannot, in the opinion of the BPatG, be based either on the decision of the CJEU or on that of the BGH on ‘#darferdas?’

In the case of the sign ‘Mädelsabend’, however, according to the Court of First Instance, it was precisely a ‘normal’ case group of a sign which already lacked (original) distinctiveness. Considerations on the concrete use of the sign on the product packaging and whether the public regularly expects an indication of origin at this point, for example in the case of fruit gums, were therefore excluded.

German Federal Patent Court (BpatG), Reference No.: 25 W (pat) 29/19

January 5, 2021
Sabine Röhler
Attorney at Law