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BGH Bonus II

BGH, Judgment of 28 February 2002 - I ZB 10/99 – Federal Patent Court

In Case I ZB 10/99 of 28 Feb 2002 the BGH judged on the issue of the distinctiveness of a German word (“bonus”) with a broad range of meaning, whereas its different aspects of meaning are generally similar and express not only complex economical processes, but also non-economical processes including the metaphorical use of a word.

On Oct 22 1988 the designation “BONUS” had been applied for as a trademark on chemical products for agricultural use. After the German Patent Office had rejected the application on grounds of insufficient distinctiveness of this designation. The Federal Patent Court then confirmed this rejection. After a successful appeal to the BGH the case was returned to the Federal Patent Court, which rejected the appeal again on the following grounds:

The regulations fixed in the Trademark Law also apply to trademarks applied for before the Trademark Law entered into force.

Lack of distinctiveness does not presuppose that the designation describes a trait of a certain product, as the designation “BONUS” will mostly be understood as a familiar general term with no relation to the origin of the product. Above all, the word “BONUS” is a common, descriptive and comprehensible term in German trade and commercial language. It is used in different contexts meaning extra, dividend, surplus, profit, credit entry, etc. In common language “BONUS“ is also used to express an advantage.

Because of its broad range of meaning the word “BONUS” in special as well as in common language is not suited to describe the origin of a product. The prospective buyers of products of such a trademark will tend to believe that in purchasing them they will enjoy advantages of some kind or form. This applies not only to the agricultural product the trademark had been applied for, but also to nearly all other types of products.

The term “BONUS” might be considered as describing the traits of a product (to a significantly higher degree than other designations lacking distinctiveness), since in business dealings a better price can be an equal argument to purchase a product as quality, design, shelf life and the like are. The judgment takes into consideration that for these reasons a minimum distinctiveness may be discerned. Firstly, however, all possible meanings point to an advantage in buying the product and, secondly, irrespective of its special or common language

meaning, it provides no information on the origin of the product whatsoever.

The BGH stated on a second appeal that on reviewing the case insufficient distinctiveness as claimed by the Federal Patent Court cannot be confirmed.

According to Trademark Law, distinctiveness is defined as the inherent suitability of a trademark to differentiate the products of a company using this trademark from products of other companies. Even little distinctiveness is sufficient to guarantee protection. Distinctiveness exists if a concept not describing the main characteristics of a product can be ascribed to its respective trademark, and if a German or foreign language word is not exclusively understood in one way, for example due too its use in advertising, but has distinctive character. The trademark applied for provides the required amount of distinctiveness for its products. The Federal Patent Office’s demands were too high.

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© German trademark lawyer Michael Horak 2002-2018

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