Practice with regards to the meaning of indications in foreign languages Liaison meeting Alicante 2009 German Patent and Trade Mark Office

Leading Case - Matratzen Concord C-421/04 „ Matratzen“, the German word for „mattresses“, was registered in Spain as a trade mark for „mattresses and related products“

Principal question Under which circumstances can a trade mark be registered in a Member State when, in the language of another Member State, it is not distinctive but merely denotes or describes the product concerned ?

Judgement of the Court, March 9, 2006 (C-421/04) Art. 3 (1)(b) and (c) of the First Council Directive 89/104/ EEC does not preclude the registration in a Member State, as a national trade mark, of a term borrowed from the language of another Member State in which it is devoid of any distinctive character or descriptive of the goods and services in respect of which registration is sought, unless the relevant parties in the Member State in which the registration is sought are capable of identifying the meaning of the term.

„relevant parties in the Member State“ definition in paragraph 24 of the decision: „… it is necessary to take into account the perception of the relevant parties, that is to say in trade and/or amongst average consumers of said goods and services…“

Case Studies Rapido Classes 1, 3, 5 (i.e. chemical products, products for desinfection) Refused Italian word for „quick“ descriptive (quick effect) traders understand the meaning of the term; they need the term for the export/import of goods to/from Italy

Case Studies Puro Class 05, 30 (food for babies, bread) Refused Italian/Spanish word for „pure“ descriptive (quality) traders unterstand the meaning of the term; they need the term for export/import of such goods to/from Italy/Spain

Case Studies BAGNO Class 11, 20 (i.e. bath, washbassin) Refused Italian word for „bath“ descriptive for the goods traders understand the meaning of the term; they need the term for the export/import of such goods to/from Italy

Case Studies Capolavoro Class 7, 9, 11 (i.e. washing maschine) Refused Italian word for „masterpiece“ descriptive for the goods (quality) traders understand the meaning of the term; they need the term for export/import of such goods to/from Italy

Traders as a relevant party The German Patent and Trade Mark Office takes the view that the traders are capable of identifying the meaning of a term in a foreign language if the term is clearly descriptive for the goods and services if the language is a relevant foreign language in the international commerce (like English, French, Italian, Spanish, Portugese)

points of discussion: What is the practice of OHIM and other Member States ? Which languages do you take into account ?

special case: Chinese ideographs The German Patent and Trade Mark Office treats Chinese ideographs as figurative marks although they might be descriptive for the goods and services. we have no legal basis to demand a translation and a transcription from the applicant

points of discussion: How do OHIM and other Member States treat Chinese ideographs ? Do you demand a translation and do you have a legal basis for that ?

Thank you for your attention !