In a recent ruling in AS v Deutsches Patent- und Markenamt (C-541/18), the CJEU held that consideration should be given to all the relevant facts and circumstances, including all the likely types of use of the mark applied for, during examination.
AS applied to register the mark #darferdas? in relation to goods in class 25 (clothing) in Germany. The German Patent and Trade Mark Office (DPMA) rejected the application on the basis the mark was devoid of distinctive character – 'Darf er das?' means 'Can he do that?' in German. AS appealed to the Federal Patents Court in Germany (Bundespatentgericht) but the case was dismissed - the court held that the mark comprised of common German words joined together and was not distinctive in relation to class 25. As a result, AS further appealed to the Federal Court of Justice in Germany (Bundesgerichtshof).
The Bundesgerichtshof noted that it was plausible that the use of the sign on the front of clothing was simply one of several uses available to an applicant. Such a sign could also be used on the clothing label inside the clothing. If the applicant did use the sign in this manner, the court felt the public would still perceive that sign as a mark which indicates commercial origin (even though it was a different use, and not on the front of the clothing). The court noted that it was not necessary that every use be conceivable or likely but simply that the use was plausible. The court decided to refer the question below to the CJEU:
Does a sign have distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of goods or services, even if this is not the most likely form of use of the sign?
The CJEU held that all relevant facts and circumstances must be taken into account, including all likely types of uses of the mark, when examining distinctiveness. The CJEU recognised that an applicant is not required to indicate or know the use of the mark at the time of filing. As a result, when it is obvious that several uses of a mark are practically significant or customary in that economic sector, such uses should be taken into account. However, by contrast, those uses which, whilst conceivable in that economic sector, are unlikely should be classed as irrelevant, unless the applicant provides concrete evidence to prove such an unusual use is customary in that sector.
In the present case, the CJEU held it was customary to use the mark on the exterior of the goods, and on labels sewn inside the clothing. As a result, it is now for the national court (the Bundesgerichtshof) to determine whether the sign in question is distinctive and can act as indicator of commercial origin.
In addition, it is also worth noting that the CJEU distinguished the case with that of Deichmann v OHIM (C-307/11 P). It held that Deichmann remains relevant only in cases where it appears that solely one type of use is practically significant in the economic sector concerned. This is different to the current case where multiple uses are practically significant in the clothing industry.
This decision should not come as surprise to trade mark owners, but it is helpful for the CJEU to provide clear guidance on the matter. It is also important for trade mark owners or future applicants to remember that, unless they provide concrete evidence to show an unlikely use is in fact usual in their economic sector, it will be considered to be irrelevant.