No other sweet is currently causing as much excitement as Dubai chocolate. The trendy chocolate from TikTok has been on everyone's lips for some time. The chocolate, consisting of milk chocolate, pistachio cream and taze kadayif (dough threads), is being reported on in numerous new and established media outlets. Countless well-known manufacturers and those who would like to become well-known offer the sweet, in very limited quantities. Such hype naturally also leads to numerous trade mark applications in the associated classes of goods, in particular in class 30 for chocolate, class 29 for a combination of chocolate and dairy products, class 43 for chocolate tastings or chocolate cafés, and class 35 for retail and wholesale.

On November 12, 2024, 14 trademarks related to Dubai Chocolate had been filed with the European Union Intellectual Property Office, the World Intellectual Property Organization and the German Patent and Trademark Office, for example the trademark “Dubai Schokolade”.

This inevitably raises the question of how to assess the chances of such a trademark being granted. In principle, any word, including personal names, that is capable of distinguishing the goods or services of one undertaking from those of other undertakings can be protected as a trademark. Trademarks that “consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, [...] the geographical origin [...]” are excluded from protection. Also excluded are marks “which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of trade to designate the goods or services”. These grounds for refusal are objections that are examined by the offices before the marks are granted. These obstacles are also referred to as “absolute grounds for refusal”.

In order to assess the absolute grounds for refusal, each trademark must be considered individually and on its own merits. Such an exemplary consideration will be carried out here for the trademark “Dubai Schokolade”, which was filed on August 28, 2024. It is assumed in the literature and case law that indications of geographical origin, such as the term “Dubai”, must remain available and are therefore not eligible for registration, since it is assumed that there is a general interest in their unimpeded use. A place name in the name of a trademark does not necessarily have to indicate the place of production or distribution. It may be sufficient that the designs or a particular recipe originate from the area concerned.

When registering a trademark, it is necessary to check whether a location, if not current, could have a descriptive function in the future. According to the relevant literature, there is an absolute ground for refusal if “it is reasonable to expect that the sign in question may in future be associated with the goods/services as an indication of geographical origin” (Ströbele / Hacker / Thiering, Markengesetz - Kommentar, 14th edition 2024, Section 8, para. 533). Likewise, there seems to be a stronger presumption that large cities will be considered for goods and services in the future.

However, the date of application is decisive for assessing the absolute grounds for refusal under German and European law (Ströbele / Hacker / Thiering, Markengesetz - Kommentar, 14th edition 2024, Section 8 MarkenG, para. 21). Therefore, the question seems to arise here as to whether the term “Dubai Schokolade” already consisted exclusively of signs that may serve in trade to designate the type, quality, geographical origin at the time of registration. If the internet trends are accepted as a benchmark here, it could be concluded that the awareness only increased drastically in the second half of October. On this assumption, it could be said that at the time of registration, the term “Dubai Schokolade” was not so common that the term “Dubai” suggests a particular type of chocolate.

Therefore, it seems to be a matter of judgment in this case which of these two principles is followed, although there seems to be some evidence that the term “Dubai Schokolade” could be excluded from registration without any further indication that leads to a stronger distinctiveness.

Indications of Geographical Origin play a special role in this context. Here, the product itself must come from a specific place, a specific region or a specific country. The essential prerequisite for protection is the connection between the characteristics of your product and its manufacture in the region of origin. The application for registration of an Indications of Geographical Origin can be submitted to the German Patent and Trade Mark Office or via the authorities of the third country concerned or directly to the European Commission and is then examined at European level. The Indications of Geographical Origin is therefore a special case in trademark law.

Trade marks which do not consist exclusively of signs or indications which are used in trade to designate the kind, quality or geographical origin are not excluded from registration. Accordingly, trademarks with an addition that is not descriptive, for example the name of the manufacturer in the form “by name”, have an advantage when registering as a trademark.