The registered words "Toffee to go" missing in relation to the goods in Class 30 any distinctive character (§ 8 Abs. 2 No.. 1 Trademark), so that the brand has the authority to sign legal reset reported (§ 37 Abs. 1 Trademark).
FEDERAL PATENT COURT 25 In (pat) 531/12- Toffee to go
DECISION
In another case
…
concerning the trade mark registration 30 2011 028 352.8
has 25. Senate (Brand appeal Senate) the Federal Patent Court 13. November 2012 , composed of Presiding Judge Knoll, Judges Grote Bittner and the judge Metternich
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decided:
The complaint of the applicant is rejected.
Reasons
I.
Remember as a word mark is the word sequence
Toffee to go
apply to the following goods in Class 30:
Cocoa, Sugar, Honey and foods containing these substances, pastry and confectionery; Cocoa products, Chocolate and chocolate products, Confectionery, Cake, Sugar confectionery, Bon-bons, Chewy candy and gum, not for medical purposes, Geleefrüchte, Confectionery; the aforesaid goods with sugar or sweeteners or sugar-free-their.
The brand site for class 30 the German Patent- and Trademark Office has this under the number 30 2011 028 352.8 Guided by a registration officer by order of the higher service 4. January 2012 with full reference to the notice of complaint 21. September 2011 rejected-sen.
The brand agency believes, that the registration of the word order of the protective barriers § 8 Abs. 2 No.. 1 and 2 Trademark stood opposite-. There were a grammatically fairly educated phrase, that the
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public concerned confers an immediate property descriptive information since-executed starting, that in that way either self Toffees (Candy) or. Caramel-containing confectionery or takeaway. the move constituted or could be used as an ingredient or ingredients for the manufacture or preparation of the goods. The element present "Toffee" be-draw a sound in English language (Soft) Caramel or. a caramel-containing confectionery. "To go" is a fixed-englischspra Chiger expression, of the importance of the German language "on the go, to go "have. The word order is registered in the aforementioned sense comparable to traffic in view, more common word combinations such as "coffee to go" or "muffins to go" too readily understandable.
Directed against this complaint raised by the applicant.
It believes, that the registered word order preclude any protective barriers. Slogans should be subject to any more stringent requirements compared to other types of marks. The sign was a result possessed distinctive. You find yourself in any of the usual German-language lexicons, but is a conceptual creation. In English-language dictionaries do not come before this phrase. Of the brand agency researched chierte examples like "cake to go" or "donuts to go" occupied, that the Pu-blikum perceive such concepts as a special and original, where the term "toffee to go" as I rhyme on the very well known "coffee to go" into something special and unexpected effect. "Toffee to go" products are marketed in bags and boxes, that would be offered on shelves, therefore considered that the phrase-reported at a location on surprising the audience and the audience a grin WOULD calls forth, evidence to prove the assertion of the Un-distinctiveness. The members also have no descriptive word order the goods in content. Unlike "cake to go" it han-dele at toffee always about convenience items, in the bags, Boxes etc. output would, so that the term "toffee to go 'is very useful free end
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(similar "Cola boneless"). Toffees would never offered separately for consumption, but the public is accustomed, that a plurality of bags in toffees, Boxes or similar distributed will, so that the driving character of this product everyone is clear. The audience could the phrase "toffee to go" found no descriptive meaning, where "toffee to go" a stylistic tables based on "coffee to go" and this constitutes "veralbernde" difference was evident immediately.
In the alternative, the applicant, a restriction of goods contained by supplementing it with the words "in a variety in bags or boxes be-forbidden goods".
Is because of the additional details on the contested decision of the Mar-kenstelle, the submissions of the applicant and the other documents in the case referred.
II.
The appeal is admissible, but unfounded. Contrary to what the applicant notified of the missing words "Toffee to go" in relation to the goods in Class 30 any distinctive character (§ 8 Abs. 2 No.. 1 Trademark), so that the brand has the authority to sign legal reset reported (§ 37 Abs. 1 Trademark).
1.
Distinctiveness is intrinsic to a brand (concrete) Suitability, from traffic considered as commercial origin to be. Because the main function of a trademark is to, To ensure the identity of the origin goods and services (vgl. u.a. ECJ GRUR 2004, 428, Tz. 30, 31 – Handle; BGH 2006, 850, Tz. 17 – FOOTBALL WORLD CUP 2006). No distinctive names have particular, which traffic
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in connection with the goods simply assigns a descriptive term in the foreground content (vgl. BGH 2006, 850, Tz. 19 – FOOTBALL WORLD CUP 2006; ECJ GRUR 2004, 674, Tz. 86 - Post office). Moreover, including the lack of distinctiveness. but such information, related to circumstances, which the claimed goods not directly concern, but with whom a close descriptive reference is made to the product concerned (BGH – FOOTBALL WORLD CUP 2006 a.a.O.).
In assessing the question, whether the protective barrier of the § 8 Abs. 2 No.. 1 Mar-Keng present, is significantly off on the mind of the relevant domestic traffic circles, these being all circles, where are the trade mark use or may have an impact. This leads to the view of the well informed and reasonably observant and circumspect, to the average consumer in the area of concrete goods and ser-vices (Ströbele / Hacker, Trademark Act, 10. Ed, § 8, Rdn. 29, 30). For the claimed goods are essentially chocolate, Sweet- and baked goods, So mass goods of daily consumption, aimed at the broad public.
Based on the above principles, the words "Toffee to go" not suitable, in relation to the goods in Class 30 to serve as an indication of origin betriebli-cher.
It is apparent from those identified by the trademark office receipts, of the appli-cant in the notice of complaint system 21. September 2011 were submitted (see, in particular the passages of L ..., Bl. 8 the Patent Office records, from Dr. O ..., Bl. 11/12 der Pa tentamtsakte, and from dict.leo.org, Bl. Bl. 15 The Patent Office record), the brand has put the importance of the words "Toffee to go" in terms of "Toffees (Kara lamellae) or. Caramel-containing confectionery or takeaway. for on the move "correctly determined. This meaning is the aforementioned traffic circles
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also known to a relevant extent, especially since the English expression "to go" - also in the relevant product range – Has found its way into the German language (vgl. the extent of the brand and place determined by the applicant in the annex to decision 4. January 2012 submitted documents to the word combinations "cake to go", Bl. 22-23 and Bl. 27-28 der Patentamtsakte und „Torte to go“, Bl. 25 The Patent Office record). Furthermore, the on-going melderin in their pleadings themselves assume, that transport the term "coffee to go" knows and understands, as defined above applicable.
Starting from the abovementioned meaning, the traffic in the notified th word sequence, if she did in connection with the claimed goods countered-net, only a descriptive note to the effect seen, that it is either to themselves or to caramels (fine) Back-, Confectioners, Sweet- and sugar confectionery including sweets, Confectionery, Chews, Chewing gum and chocolate or. Chocolate and cocoa products are, which are used in mixtures with toffee / caramels available "to go", or cake, where toffees e.g.. can be used as decoration, or - with regard to the further, goods claimed cocoa, Sugar, Honey and fruit jelly – or by flavoring or decorative ingredients. Ingredients to Weichkara-mellprodukten. Although the extent of the applicant's consent, that Weichkara slats usually in bags or other containers to take home to be offered, and the traffic typically buys this product as a co-Bringsel and not for consumption on site. "Toffee to go" but why not "meaningless" word order, but it takes nothing more than a matter of course to express, that this product actually describes typisierend. But then, the traffic in the trade phrase just see no commercial source Note. Even if one should recognize in-pending phrase a slogan, for its protective ability as a brand more stringent, but also no less stringent requirements that apply to other forms of trade mark, then this exhausted in a descriptive-
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abrasive or laudatory statement, without it can be seen, -to what extent the reported sequence of words could fulfill a commercial origin.
It is irrelevant, whether it is registered with the phrase a neologism, which as such is not lexically detectable. For the determination of the obstacle protection of lack of distinctiveness is a lexical evidence, that the sign is already familiar in the market, or used is, not necessary (vgl. Ströbele / Hacker, Trademark Act, 10. Ed, § 8, Rdn. 107 m.w.N.). It is much more, that the sign of the result due o.g. Trade usage is understood as a tangible indication rather than commercial origin. As this understanding further the traffic without, opens without a particular analyte approach, but actually imposes, changes the reference to the term "coffee to go" on to the lack of distinctive character of the registered word order anything, even if the traffic like this record because of the aforementioned reference to "coffee to go" with some humor.
2.
As far as the applicant alternative that restricting the list of goods to the effect, that the list of goods should be supplemented with the words "offered in a variety of goods in bags or boxes", This changes in the aforementioned evaluation of the (missing) Distinctive likewise nothing. It is questionable already, whether the restriction in the above wording is appropriate at, to restrict the list of goods is clearly and unequivocally. However, this can ultimately be left open. Because it is typical of the presently claimed goods, that they are not individually, but in a multitude and in bags or boxes (packed) - And just to take with- – be offered and sold. The alternative, submitted by the applicant supplement the list of goods eliminates the above according to the. Versions of the descriptive phrase "toffee to go" in terms
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to the goods not so, but it actually strengthens. Also explained that the alternative restriction of the goods can not be an affirmation of the trade mark has distinctive character within the meaning of § 8 Abs. 2 No.. 1 Trademark lead.
3.
After the o.g. Designs, there is evidence, that the protective barrier of the § 8 Abs. 2 No.. 2 Trademark Law is fulfilled. But since the sign was a result - as mentioned - already under § 8 Abs. 2 No.. 1 Trademark protection is incapable, this can be left open.
4.
Conducting a hearing was not required. The applicant has an application pursuant to a hearing be held § 69 No.. 1 Trademark not found. There were also no factual or legal issues relevant to the decision, the debate at the oral proceedings pursuant to § 69 No.. 3 Would have required Trademark.
Knoll
Grote Bittner
Metternich