Deutsche Post Wins POST Mark Deutsche
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K CASE COMMENT Building trademark expertise since 1986 DeutscheDeutsche PostPost winswins POSTPOST markmark THE CASE – Deutsche Post AG – Federal Supreme Court of Justice, Germany – 23 October 2008 K Trademark protection through use AUTHOR by monopolies? Florian Traub is a German Rechtsanwalt (Attorney-at-Law) with additional qualification as Solicitor of England and By Florian Traub of Hammonds LLP Wales, and is member of the Commercial & IP practice in the Munich eutsche Post AG (German for trademark registration, it does not office for Hammonds. His particular German Mail plc), the incumbent necessarily mean that the incumbent will be expertise covers advice in relation to all D in the German postal market, in a position to prevent its competitors from aspects of trademarks from pre-filing achieved an important victory in the struggle using the term “POST” in combination with searches and clearance through filing to secure its trademarks rights in the term other word elements, such as “Die Neue and prosecution to post-registration “POST” (“MAIL”) in Germany before the Post” (The New Mail) or “City Post” (City matters and third-party conflicts. He Federal Supreme Court of Justice (“Supreme Mail). This follows the Supreme Court’s also specialises in contentious work including trademark and trademark Court”). In a decision dated 23 October earlier decisions dated 5 June 2008 in the 1 3 4 infringement actions. He also on issues 2008, the Supreme Court overturned an cases POST and CITYPOST. 2 of designs and copyright as well as earlier ruling of the Federal Patent Court matters of unfair competition law. (“Patent Court”) which had confirmed the Background cancellation of Deutsche Post AG’s German Postal services are of major economical word mark “POST” by the German Patent impact, as they profoundly affect other and Trademark Office (“GPTO”). commercial sectors. Although the tradition The campaign will, however, continue as of writing personal letters and keeping pen the Supreme Court referred the case back to friends is slowly (and in a way sadly) being the Patent Court for further consideration. diminished by its modern electronic Additionally, even if Deutsche Post AG counterpart, the internet, in particular e- eventually prevails and keeps its German commerce, has triggered further growth of 10 | Trademark World #215 | March 2009 www.ipworld.com Building trademark expertise since 1986 CASE COMMENT K the postal market. E-commerce giants like agree and filed a new application for Supreme Court argued, did not justify the Amazon are dependant on postal services for “POST” claiming acquired distinctiveness. inevitable assumption that the mark has not the delivery of millions of parcels to This time, the GPTO accepted the acquired distinctiveness through use. customers. The postal sector in Germany application and registered the mark. generated a turnover of approximately 23 Deutsche Post AG’s trademark registration billion Euros in 2007.5 was soon challenged by competitors as a The Patent Court The EU postal sector has been restraint on the liberalisation of the postal “criticised the way in significantly liberalised, with a gradual market in Germany. On receiving an opening up of the market.6 Although the application for cancellation, the GPTO which the consumer speed of liberalisation has varied from cancelled the registration for the majority of surveys were carried Member State to Member State, the last the goods and services relating to postal monopoly boundaries are set to disappear. services. On appeal, the Patent Court out on behalf of Member States must abolish any remaining confirmed the GPTO’s decision, and the Deutsche Post AG competition restraints by 2010 at the latest, further appeal to the Supreme Court resulted ” with the possibility of some Member States in the decision at hand. postponing full market opening by a The Patent Court criticised the way in maximum of two further years. The ruling7 which the consumer surveys were carried In Germany, the monopoly on postal There is no dispute in relation to the fact out on behalf of Deutsche Post AG. The services had been a longstanding institution. that the term designates the purpose of the Supreme Court, reviewing the case only on The postal privilege was given to the House goods and services in question. Both courts points of law, was not called upon to decide of Thurn and Taxis in the 15th century, and ruled that the term “POST” is descriptive in whether the method of Deutsche Post AG’s the family maintained it for many centuries. respect of the postal services for which consumer surveys served as an adequate Eventually, after the Second World War, Deutsche Post AG sought registration. As a basis for the assessment of acquired Deutsche Bundespost (German Federal Mail) consequence, following the provisions distinctiveness. However, the Supreme Court was the holder of the monopoly until its governing absolute grounds for refusal of ruled that mere doubts on how these surveys privatisation in the 1990s. Deutsche Post AG protection of a trademark,8 the term were conducted were not sufficient alone to is the successor to the former German state- “POST” would not be eligible for justify cancellation. Instead, the Patent owned mail operator. registration. However, the absolute grounds Court should have arranged its own The last monopoly on the distribution of for refusal, namely descriptiveness of the consumer surveys. The GPTO or the Patent letters below 50g (1.76oz) in Germany term and the need to keep the term freely Court must collect expert evidence to put ended on 31 December 2007. However, available for third parties, could be themselves in a position to rule on the while competitors have been able to overcome if the mark “POST” had acquired question of acquired distinctiveness. establish their services in the market for distinctiveness through use. Pursuant to Consequently, the Supreme Court referred the distribution of parcels and express Section 8 (3) of the German Trade Mark the case back to the Patent Court which will business mail in the fully liberalised postal Act,9 the absolute grounds for refusal do not now have to review the case again. sector, the market for the distribution of apply if the mark, before registration, as a letters must still be regarded as widely result of its use in relation to the goods and Interpretation dominated by Deutsche Post AG. In fact, services in respect of which registration has Registration of a trademark on the basis of the vast majority of consumers is likely to been applied for, has acquired acquired distinctiveness must be regarded as observe the incumbent as the only full distinctiveness among relevant consumers. a useful breach of the underlying principle service operator in Germany. The GPTO originally allowed Deutsche that descriptive terms should be kept freely In the light of the threats of Post AG’s claim of acquired distinctiveness available for everyone’s use. It is therefore not liberalisation, and understandably from and therefore registered the trademark in surprising that a relatively high number of Deutsche Post AG’s commercial perspective, 2003. In the cancellation proceedings at disputes concerning the question of acquired the company is attempting to use its strong hand the key issue is therefore whether the distinctiveness eventually reach court. This is market position to extend its monopoly. mark had in fact acquired distinctiveness at particularly true when the trademark Deutsche Post AG’s strategy includes the time of its registration or, as a result of monopoly is, as in the present case, achieved safeguarding extensive trademark rights; in the use made of it subsequently, has acquired by a formerly state-owned monopoly because fact, the company currently owns distinctive character since registration. of the incumbent’s strong position in the approximately 700 German trademark The Supreme Court emphasised the fact market following liberalisation. applications and registrations. that mere doubts as to whether the mark has The judgment is in line with previous In 2000, Deutsche Post AG filed an acquired distinctiveness or not are not decisions regarding the delicate subject of application for the word mark “POST” themselves sufficient to justify cancellation acquired distinctiveness. Following the seeking protection for various goods and of the trademark. Deutsche Post AG had judgement of the European Court of Justice services relating to the postal sector. The presented to the GPTO and the courts the (“ECJ”) in Philips v Remington,10 a factual application was rejected by the GPTO due results of consumer surveys showing that monopoly by the applicant in the relevant to lack of distinctiveness and the need to almost 85% of consumers surveyed market does not mean that the applicant keep the term freely available for recognised the term “POST” as an indication would not be able to register a mark on the competitors. Deutsche Post AG did not of commercial origin. This figure, the basis of distinctiveness acquired through www.ipworld.com Trademark World #215 | March 2009 | 11 K CASE COMMENT Building trademark expertise since 1986 that competitors were entitled to use their company names irrespective of Deutsche Post AG’s trademark registration, in accordance with Section 23 (2) of the German Trade Mark Act. According to this provision, third parties may use a trademark to explain the very nature of their services, unless such use is immoral. As a result, the extent of the German incumbent’s trademark