Discussion on the relevant circle of consumers; understanding of consumers vs. professionals involved by the 26th Senate

The word/figurative mark

was registered on 21 August 2014 for Class 14: Coins and Class 21: Drinking glasses; wine glasses and was upheld against a cancellation request. With regard to the cancellation request, it was argued that the trade mark was in need of being kept free because it could be associated with the group of goods registered for it, so that it had been registered contrary to Section 8 (2) No. 2 MarkenG.

In rejecting the cancellation request, the Trade Mark Division stated that there was no infringement of Section 8 (2) No. 2 MarkenG. ‘The name “Sophienwald” is the German name of a now Czech district (’Žofina Hut‘) of the place ’Nová Ves nad Lužnici", the German name of which has not been used since 1945. [...] Due to the small size of the district and the fact that the German name of the district has not been used for more than seventy years, it must be assumed that the name ‘Sophienwald’ is not comprehensible to the general German public as a descriptive indication of place and therefore cannot serve to describe the goods claimed [...]‘.

The applicant's appeal was directed against this. It was argued, inter alia, that the assessment of the merely descriptive content of a term does not necessarily depend on the understanding of consumers as a whole, but that account must also be taken of the circles which trade in the goods concerned and, by virtue of that fact, have a broader knowledge of all the circumstances surrounding the production of those goods.

The trade mark proprietor disputed the appellant's assertions and argued in particular that the place ‘Sophienwald’, which no longer existed, was not known for the fact that glass raw materials were mined there today. ‘Wald’ (German for forest) was a generic term and, according to the trade mark proprietor, it was wrong to assume that every word with the suffix ‘wald’ was always a geographical place.

The admissible appeal was unsuccessful. The trade mark senate states, that whether a sign or an indication is descriptive, is determined according to the understanding of the public which could be considered as purchasers or interested parties of the goods or services concerned.

What is remarkable about the present decision is that the 26th Senate does not decide whether the relevant consumer group is primarily the average domestic consumer or the domestic specialised trade. In the present decision, the Trade Mark Senate goes so far as to state that neither the average domestic consumer nor the domestic trade was aware of ‘Sophienwald’ at the time of filing. Accordingly, the trade mark senate decides that although the targeted domestic specialised trade may have been familiar with the Bohemian glass tradition, it cannot be assumed that they were aware of the ‘Sophienwald’ glassworks, which existed from 1790 to 1945.

Based on the facts ascertained by the Senate, it cannot be assumed that the domestic trade was aware of the historic Sophienwald glassworks at the time of filing the application. According to the explanations of the 26th Senate, the understanding and knowledge of the domestic specialist trade is not defined by individual specific persons who, for historical but not technically necessary reasons, deal with glass production and the numerous glassworks in the Lower Austrian-Bohemian border region and can be attributed to this circle of specialist trade, but rather on the average addressee who has at most a basic knowledge of the Bohemian glass tradition.