Do you sell can he really do that? Quarter 1 2022

By HANS MUHLBERG, Published in Intellectual Property - Law

You might be forgiven for thinking that there's a question mark missing here, that there are in fact two separate questions. But no, the title is pertinent to a recent trademark judgment in Germany. One that deals with the issue of just what consumers will/or will not perceive as a trademark or, as it is sometimes described, a badge of origin.

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The issue

A German company filed an application in Germany to register #darferdas as a trademark for clothing. Was this registrable?

The German Patent Office

Despite the applicant's home ground advantage, the German Patent Office ruled that #darferdas could not be registered as a trademark. The reason – darf er das is a common German expression meaning 'Can he (really) do that?' And let's get real, no-one in Germany would consider this expression to be a trademark!

The first appeal

This matter went on appeal and the first appeal court agreed with the Patent Office. It explained its thinking as follows:

  • #darfedas is simply 'a sequence of characters and words joined closely together composed of common German words';
  • #darfedas is no more than a stylised presentation of a discussion point;
  • as for the hashtag preceding the word, that simply indicates that the public is invited to discuss the question.

In short, consumers seeing #darfedas on t-shirts would understand it as a simple interrogative phrase. They would certainly not perceive it as a trademark.

The second appeal

The second tribunal decided that this was way above its pay grade and that it needed to refer a legal question to the European Court. The question was this:

'Is a mark distinctive (and therefore registrable) in cases where it can plausibly be used as a trademark (badge of origin), even if this is not its most obvious use?'

The European Court decided that some French might not go amiss and replied with a Oui.

back down again

Having enjoyed the benefit of the European Court's great wisdom the German court ruled that it was entirely possible that #darfedas could in fact be used on a label sewn into a garment. And, said the court, if #darfedas were indeed to be used on a label sewn into a garment consumers would surely regard it as a trademark.

The court went on to make the point that, to be distinctive and registrable, it is not necessary that every conceivable use of the mark is used as a trademark. All that is required is that there must be a plausible possibility of the mark being used in a way that it is understood as a trademark.

Conclusion

The upshot is that #darferdas can be registered as a trademark for clothing. With the court recognising that in different circumstances – for example, if #darfedas were to be blazoned across the front of the garment – people might regard it as something other than a trademark.

What can we take from this?

As lawyers love to say, everything depends on the facts. It is, of course, common for a word to be blazoned across a t-shirt or hoodie, and we generally perceive this to be the trademark. But if the wording comprises a statement or question we might see it differently, we might regard that wording to be random, or possibly designed to amuse or shock. Yet if that statement or question were to appear on a swing tab we would conclude that it must be the trademark (because if it isn't then what is?).

A final thought

The judgment is right. Yet…. it would be very weird to walk into a shop and ask an assistant: Do you sell can he really do that?

I know… you're thinking that was so interesting, surely it isn't over already! We'll here's a little bonus.

Lewis Hamilton – he's good but he's no Messi!

Like so many people these days, Lewis Hamilton drives a Mercedes, although Lewis's Merc does go particularly fast. Lewis filed an application to register the name Lewis Hamilton as an EU trademark for watches and jewellery. This application was rejected following an opposition by a company called Hamilton, a subsidiary of Swatch. The company has a trademark registration for the name Hamilton also covering watches and jewellery. It successfully argued that there would be confusion.

Lewis claimed that there will be no confusion. He referred the EU trademark authorities to the famous case of Messi, the one where the footballer successfully argued that the name Messi is so well known that it won't be confused with the earlier mark Massi. Lewis suggested that his fame is such that the name Lewis Hamilton will not be confused with Hamilton.

But alas, the European trademark authorities do not seem to think that Lewis Hamilton is quite in the Lionel Messi league. They take the view that people seeing Lewis Hamilton watches may well wonder if there is a connection with Hamilton watches. The EU trademark authorities have sought to justify this finding by suggesting that Formula One isn't quite as big as football. Controversial!

How will this end? Lewis Hamilton is a fighter – he'll surely take this to the Max!

Muhlberg, is a SA, UK and EU qualified IP lawyer. He presently finds himself in the UK, offering consulting and content writing services to various law firms: muhlbergip@gmail.com.