More than a lucky strike
David Slopek specializes in “soft” intellectual property matters at the law firm Hogan Lovells International. He focuses on trademark prosecution and litigation and has significant knowledge of unfair competition and design law.
Obtaining trademark protection for tobacco products in Germany
By David E.F. Slopek, Morten Petersenn and Wiebke Reuter
Branded tobacco products are as old as the German trademark law itself. In fact, the first trademarks for cigarettes were registered as early as 1894. While the protection sought by brand owners has evolved since then, it is safe to say that strong trademarks have never been as important as today. This article sets out the legal framework and basic conditions for obtaining trademark protection in Germany—a leading tobacco market—by providing an analysis of the relevant case law on the registrability of tobacco products.
Introduction
Marketing plays a major role for the success of consumer products. In that regard, the tobacco industry is no exception. However, what makes the tobacco industry an exception is that it faces extensive restrictions in promoting its products. Over the years, in Germany and other European markets advertisements for cigarettes have been widely excluded from TV, radio, print media and the internet. Further forms of advertisement, such as commercials in cinemas or the public transport, as well as sport-related marketing activities, have been regulated.
Against this background, a strong trademark is more vital than ever, as it allows the tobacco industry to maintain the most important form of marketing. Obviously, quality—in particular, taste—is of particular importance for tobacco products. If a consumer is satisfied with the quality and taste of a cigarette and wishes to purchase this specific product from the same manufacturer again, it is the trademark that enables him to do so. However, before the trademark can have a marketing effect by fulfilling its function as an indicator of commercial origin, it has to be registered.
Unfortunately, the registration process often turns out to be more challenging than one would expect. The legal obstacles to overcome are reflected by the German case law on the registrability of tobacco products on absolute and relative grounds (the latter ones will be dealt with in a subsequent article), which, over the years, has become quite extensive. This article aims to make the outcome of trademark registrations for cigarettes more predictable by providing a systematic overview of the relevant judicature and thus help to successfully navigate the route to registration.
Overview on absolute grounds for refusal
The first hurdle that a brand owner seeking protection has to overcome is the so-called absolute grounds for refusal as laid down in Section 8 of the German Trademark Act. If a trademark is applied for, the German trademark office examines the absolute grounds on its own motion. The two most important reasons for a registration to be refused on absolute grounds are descriptiveness and lack of distinctive character.
As far as the question of descriptiveness is concerned, Section 8 (2) No. 2 of the trademark act provides that a trademark is excluded from registration if it consists exclusively of signs or indications that may serve, in the course of trade, to designate characteristics of the goods. For a sign to fall under this provision, it is sufficient that it is capable to be used to describe the respective products—i.e., it is not necessary that it is already used in a descriptive way on the market.
Concerning the question of nondistinctiveness, pursuant to Section 8 (2) No. 1 of the trademark act, trademarks are excluded from registration if they are devoid of any distinctive character. To overcome this bar, it suffices that a sign has a minimum of distinctiveness. While descriptive signs are by definition lacking distinctiveness, a sign is eligible for registration if it is capable to be perceived as an indication of commercial origin by the public for the goods for which protection is sought.
Practice regarding tobacco products
- Signs related to tobacco products
In many cases, descriptive signs that indicate the nature or one of the key benefits of a specific product appear to be attractive from a marketing perspective. The reason is simple: You do not need any particular efforts to explain to consumers a specific benefit or the purpose of a product if this message is already conveyed in the product’s name. While this is a good reason to choose a descriptive name, the bad news is that such signs face an apparent risk to be objected to on absolute grounds.
By way of example, the sign 10’S PACK for tobacco products, including cigarettes and cigars, was rejected based on descriptiveness. The Federal German Patent Court took the view that the mark sets out a feature of the goods at issue by indicating the quantity of cigarettes in a box. Likewise, the trademark TOASTED was excluded from registration because the sign is a technical term that describes a certain roasting process for tobacco.
The trademark TABAKWELT (“tobacco world”) covering cigars was rejected based on nondistinctiveness. The patent court held that the sign is limited to a pure factual statement and stressed that it is in fact often used to describe different goods and services related to tobacco.
- Geographical indications
Geographical indications are often not eligible to trademark protection, since there is a heightened risk that consumers could perceive them as expressions of regional origin of the goods in question.
By way of example, the patent court denied registrability of the sign CALIFORNIA for cigarettes and tobacco products, thereby referring to the tremendous economic importance of the state of California, which justifies a public interest to keep the sign free to be used by everyone. In its reasoning, the court stressed that there is a general assumption that economically important areas will be needed as geographical indications because it is very likely that consumers will link the name of a well-known place to certain goods. For similar reasons, NEW YORK has been refused.
- Names of colors
Under German practice, registering abstract color marks is difficult and regularly requires evidence that a certain color is in fact perceived as an indicator of commercial origin. However, the strict practice for color marks does not apply for word marks that comprise the name of a color. Those signs are only considered to be descriptive if they refer to the product itself—e.g., brown as the color of tobacco. Therefore, the following word marks were registered as trademarks for cigarettes and tobacco products: ROT (which translates to “red”), GREEN, SILVER, GOLDEN, GOLD & SILVER, BLACK, GREY, YELLOW, BLUE, ORANGE and WHITE. As to the last mark, the patent court observed that cigarettes are white due to their paper. Nevertheless, there is no need to keep the name of the color free to be used by others because an indication that a certain cigarette is white would be superfluous.
- Numbers and letters
Numbers are generally held to be registrable on absolute grounds. By way of example, the German Supreme Court decided that the numbers “1” and “6” are eligible for registration for cigarettes. The court held that they were not descriptive as there was no indication for the consumer what these numbers could refer to. In particular, the numbers were not perceived as a reference to the filling amount of a box, as cigarettes are typically sold in larger units.
The same applies for letters, such as “Z.” In that regard, the Supreme Court decided that the mere fact that consumers might not be used to single letters as trademarks is not sufficient to deny any distinctiveness of the letter “Z” in relation to tobacco products.
- Shape
Many companies seek protection for innovative shapes of their products or packaging as a three-dimensional trademark. Case law has repeatedly stressed that the requirements for the registration of 3-D marks are, as a general rule, the same as for other types of marks. However, one must consider that consumers generally do not perceive shapes as an indication of origin. In many cases, even an unusual design will not be perceived as an indicator of commercial origin but rather as the result of a particular effort to create an aesthetic product. As a rule of thumb, 3-D marks are only registrable if they depart significantly from the typical shapes used on the relevant product sector.
Obviously, this standard is not easy to meet. For example, an application showing a picture of an octagonal packaging (See Figure 1) was refused by the patent court based on nondistinctiveness.
The court ruled that the consumers would not understand the shape as an indication of commercial origin but rather as a reference to the contained goods, namely cigarettes. In particular, the mere fact that the shape is octagonal instead of rectangular is not enough to sufficiently deviate from existing packaging of competitors.
While the standard applied by German courts is quite strict, the good news is that applying for a 3-D mark for the packaging is not necessarily a quixotic undertaking, as can be seen from a look into the German trademark register. Many companies have successfully registered marks like the ones depicted in Figure 2.
- Names
Registering the name of a famous person for tobacco products can be difficult. By way of example, the patent court refused registration of the name Leonardo DaVinci written in a slightly stylized typeface, for, inter alia, cigarettes and smokers articles. The court argued that everyone recognized the name as belonging to the famous scientist and artist. The name is a part of the cultural heritage of the public and thus not capable of distinguishing products from one company to those of another.
- Promotional or laudatory signs
Laudatory signs or promotional messages are normally held to be nonregistrable due to a lack of distinctiveness. Consequently, the patent court refused protection for the mark JEDERZEIT (“anytime”) for, inter alia, cigarettes and related products. In fact, the sign simply suggests that the products can be consumed anytime and thus conveys a promotional message. For similar reasons, marks such as FIRSTPRICE or TEST IT for tobacco products have been rejected. However, case law is not fully consistent. Notwithstanding its promotional meaning, LEADING was held to be registrable for tobacco products. Likewise, but less surprisingly, LOOK, YES and FOR YOU for cigarettes and tobacco products have been registered. The Supreme Court held the signs to be distinctive, thereby stressing that they are not commonly used in everyday language.
Summary
In Germany, trademarks normally enjoy protection only if they have been registered. While there are some hurdles to overcome during the registration process, there is extensive case law that makes the likelihood of a successful registration relatively predictable. As a rule of thumb, names of colors, numbers and letters are most likely to be granted protection, whereas tobacco-related terms, geographical indications and products’ shapes run a higher risk to be rejected.
