GRP Rainer LLP

BGH on Absolute Grounds for Refusal of Trademarks

A recent decision of the Federal Court of Justice (BGH) demonstrated that a lack of distinctive character, among other things, can prevent a trademark from being registered.


Cologne, NRW -- (SBWIRE) -- 03/22/2013 -- GRP Rainer Lawyers Tax Advisors, Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart, Hanover, Bremen, Nuremberg, Essen and London explain: In accordance with the statutory provision of the Trademark Act (MarkenG), the registration of trademarks, among other things, is excluded with respect to those for which the goods or services lack any distinctive character.

The Federal Court of Justice (BGH, 13.9.2012, I ZB 68/11) recently confirmed the refusal to register a trademark with regard to this provision. For a sequence of words, descriptive indicators or recommendations and advertising messages of a general nature are assumed to lack distinctiveness. Moreover, the descriptive meaning similarly refers to the service which leads to the production.

In order to ensure the best possible protection for a trademark, it should be registered. In doing so, the owner is granted protection against the use of the trademark by third parties. In Germany, the duration of protection is 10 years. An extension of this protection is possible thereafter. After registration, the owner of the trademark can potentially bring claims for injunctive relief, or where appropriate damages, against a party in breach of its trademark.

In order to guarantee that a trademark is actually registrable, it is advisable to obtain the advice of a lawyer active in the field of trademark law before registration of the trademark. He shall examine whether obstacles or concerns could exist with respect to the registration and support you in registering any trademark. Finally, a lawyer active in the field of trademark law can also then prepare solutions for you if you suspect that your trademark is being misused.

About GRP Rainer LLP
GRP Rainer LLP is an international firm of lawyers and tax advisors who are specialists in commercial law. The firm counsels commercial and industrial companies and corporations, as well as associations, small- and mid-sized businesses, self-employed freelancers and private individuals worldwide from offices Cologne, Berlin, Bonn, Dusseldorf, Essen, Frankfurt, Hamburg, Hannover, Munich, Stuttgart, Bremen, Nuremberg and London UK.

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