The ® symbol as part of a trademark may be misleading

BGH, decision of 17.10.2013; I ZB 11/13:

In the case of a decision of the Federal Patent Court it must be evident that all goods or services in question have been included in the examination. The reasoning, however, may be limited to groups or categories of goods/services for which the trademark claims protection.
A circled “R” as an element of the trademark may be deceptive in the sense of § 8 para. 2 No. 4 MarkenG, if this is only pending on one element of the trademark and if there is no separate trademark protection for this element.
The appeal decision does not necessarily have to be set aside and rejected if the ground for refusal of registration accepted by the Federal Patent Court does not exist. Rather, findings made by the Appeals Court regarding a different ground for refusal of protection can still justify the maintenance of the appeal decision.
The case:

The applicant requested the following word/figurative mark for various goods and services from the German Patent and Trade Mark Office:

On a red square base there is a sausage, the words “grill meister” and the sign ®.

The registration was applied for in the following areas, among others:

Class 29: ‘Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compote; eggs, milk and milk products; edible oils and fats
Class 30: ‘Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar; sauces (condiments); spices; ice;
Class 31: ‘Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, live plants and natural flowers; foodstuffs for animals; malt’;
Class 32: ‘Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages
Class 33: ‘Alcoholic beverages (except beers)’;
Class 43: ‘Catering and accommodation services for guests’.
The Trademark Office of the German Patent and Trademark Office then rejected the application on the grounds of a need to keep the mark free and lack of distinctiveness.

The case law:

The applicant’s appeal before the Federal Patent Court was unsuccessful.

The legal appeal before the Federal Supreme Court also remained unsuccessful.

The Senate confirmed the assessment of the lower instance and reiterated the argument that the coveted word and figurative mark is subject to the ground for refusal of protection based on lack of distinctiveness under § 8 (2) No. 1 MarkenG for the goods and services 29, 30, 31, 43.

The assumption of the Federal Patent Court that the trademark in question is also excluded from registration for the goods “beers, alcoholic beverages (except beers)” according to § 8 para. 2 No. 1 MarkenG does not stand up to legal review.

However, the appeal was unsuccessful in that it could not be deduced from the grounds of appeal for which goods and services the Federal Patent Court had assumed a lack of distinctiveness. Accordingly, a statement of grounds for refusal could be limited to groups or categories of goods/services for which the trademark claims protection.

However, the Federal Patent Court did not set the requirements for the existence of distinctiveness within the meaning of § 8 (2) No. 1 MarkenG too high. Thus, a promise of quality can be inferred from the desired word/picture trademark without further mental steps.

The Federal Patent Court’s assessment that a simply designed sausage is not a graphic element which is sufficient to overcome the obstacle to protection was also finally affirmed by the Federal Patent Court.

For these reasons, a rejection to the Federal Patent Court could be omitted in the case of a dispute.