BPatG 26th Senate (Trade Marks) - Date of decision 17 August 2021 - File number 26 W (pat) 505/19 - Die Nuss mit dem Schwips

According to the 26th Senate of the German Federal Patent Court, the assessment of whether a slogan-like word sequence has distinctive character within the meaning of Section 8 (2) No. 1 MarkenG depends on whether the word sequence requires a minimum of interpretation and/or triggers a thought process with the average consumer.

The word sequence „Die Nuss mit dem Schwips“ (“The nut with the buzz”, “Schwips” refers to being tipsy) has been applied for, inter alia, for the goods "fine bakery products", "preserved, dried and cooked fruits and vegetables", "chocolate products" and "alcoholic beverages [except beers]" in classes 29, 30 and 33. The examining division of the DPMA rejected the application for the above-mentioned goods. The Office states in this regard that "the average consumer is accustomed to the phrase “mit (dem) Schwips” in a wide variety of food sectors and therefore understands the slogan-like phrase only as a factual indication that the goods advertised with it are alcoholized products based on or with the addition of nuts or nut flavor variations or in the form of a nut liqueur, nut brandy or nut spirit."

This was the subject of the applicant's appeal. Among other things, the applicant is of the opinion that a nut cannot contain alcohol and therefore cannot cause a “Schwips”.

The 26th Senate of the Federal Patent Court essentially confirmed the statements of the Trademark Office. The assessment of the distinctiveness of (slogan-like) word sequences and slogans is not subject to stricter standards than for other word signs. However, even if trademarks consisting of signs or indications which are otherwise used as advertising slogans contain a factual statement without being directly descriptive, they may nevertheless be suitable for indicating to the consumer the commercial origin of the goods referred to. This may be the case in particular if these trademarks do not merely consist of an ordinary advertising message, but have a certain originality or conciseness, require a minimum of interpretation or trigger a thought process with the average consumer.

The slogan-like word sequence "Die Nuss mit dem Schwips" does not meet these requirements for distinctiveness within the meaning of Sec. 8 (2) No. 1 MarkenG for most of the goods claimed. Although it is short and concise, it neither needs to be interpreted nor does it trigger a thought process. On the contrary, at the time of filing, April 23, 2018, the relevant domestic public already perceived it, without any particular mental effort, clearly and exclusively as a catchword-like, promotional praise of the quality and/or effect or the intended purpose of most of the products in question, but not as an entrepreneurial indication of origin.

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