The Federal Patent Court has decided in its decision of 29. October 2012 (30 The (pat) 40/11) The registration of the slogan “Facts become facts” as a trademark for software and consulting services in the area of ​​contract management was rejected, However, the appeal to the Federal Court of Justice was admitted.

Key message

A slogan, the one when you log in (geringe) possessed distinctiveness, may lose this during the registration process, if it is widely used as an advertising slogan in the affected industry. According to German practice, absolute grounds for protection depend on the time of the decision on registration.

Facts

The applicant reported the sequence of words in September 2007 for stored computer software (especially for contract management), corporate- and IT consulting as well as software programming. The DPMA rejected the application due to a lack of distinctive character. In the appeal proceedings, the court presented internet evidence, after which several providers of contract management solutions now used the slogan.

The decision

The Senate conceded, that the slogan was not inherently incapable of protection: It only contains a vague one, suggestive hint, require a certain amount of interpretation and appear concise thanks to the rhyme “files/facts”.. However, it is now being used as an advertising slogan by a larger number of providers in IT-supported contract management. This means that the specialist audience can no longer associate any idea of ​​origin with it; whether individual users cooperated with the applicant, is not visible to traffic. The rejection was based on § 8 Abs. 2 No.. 1 Trademark.

The objection, the long duration of the procedure should not be to the detriment of the applicant, the court rejected. The legal complaint allowed it, because according to the ECJ ruling “flight exchange” (2010) needs to be clarified, what point in time should be taken into account for absolute barriers to protection.

Importance for practice

Applicants of slogans should keep an eye on the use by third parties during the process and, if necessary, take action against it at an early stage. Because the appeal was allowed, should be considered before appealing this decision, how the BGH answered the question of timing; the article reflects the status at the time of the decision.

Full text: rechtsprechung-im-internet.de (CERTIFICATE 30 The (pat) 40/11)

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Summary of the decision; no legal advice in individual cases.