Decision of the BPatG 28th Senate (Trademarks) of January 21, 2021 (AZ 28 W (pat) 518/20) "Schaffer".
According to the 28th Senate of the German Federal Patent Court, when assessing whether a trademark application is precluded by a requirement of availability according to § 8 (2) No. 2 MarkenG, it is not relevant whether the meaning of the sign applied for is comprehensively known to the average consumer.
The word mark "Schaffer" has been applied for, inter alia, for services for catering of guests in class 43. The examining division of the DPMA has rejected the application for the above-mentioned service after a previous objection. The Office stated that the application trademark "Schaffer" designates a "man who prepares and provides the ship's meal". Thus, it clearly relates to the services covered by the application. The applicant's argument that 'Schaffer' is a term from the maritime language which is not used in normal language in Germany to describe catering services and is therefore not required by restaurateurs to designate their services is not relevant.
The 28th Senate of the Federal Patent Court essentially confirmed the statements of the Trademark Office. The application sign "Schaffer" does not only mean "hard worker", but also "man who provides and prepares the ship's meals" (cf. at "www.duden.de", search term: "Schaffer"). Consequently, the application sign expresses that the services are offered for the catering of guests on a ship or that these are carried out by a person who is very skilled in the preparation of meals served on ships. It thus gives the impression that the catering services claimed have a connection with ships. The factual statement conveyed by the sign in question designates another characteristic of the service in question within the meaning of § 8 (2) No. 2 MarkenG. Such a feature comprises indications and signs which describe circumstances with reference to the goods and services in question which are important for the trade in goods and which are somehow significant for the targeted group of customers. It is not necessary that the sign in question completely characterizes or describes these features.
Consequently, there is a current interest in keeping the term "Schaffer" free from monopoly rights of an individual even without the addition of "Mahlzeit". Whether this is the case at the time of the decision is irrelevant, since the ground for refusal of protection under § 8 (2) No. 2 MarkenG requires the refusal of registration even if the use in question as a factual indication has not yet been observed, but such use may occur at any time in the future.