The matter at hand

The German company AS applied to the Deutsches Patent- und Markenamt (German Patent and Trade Mark Office, ‘the DPMA’) for the registration of a sign comprising the hashtag ‘#darferdas?’ for goods in class 25 (clothing, in particular tee-shirts, footwear and headgear). ‘Darf er das’ is German for ‘Can he do that?’.

The DPMA rejected the application finding that the sign was devoid of distinctive character. The Bundespatentgericht (Federal Patents Court, Germany) dismissed the appeal against this decision, considering that the sign at issue is composed of common German words and will be perceived by the public as a hashtag inviting the public to discuss the question ‘Can he do that?’. According to that court, the public would understand that question — in particular if placed on the front of tee-shirts — for what it is, namely as a simple interrogative phrase.

In the appeal against this decision, the Bundesgerichtshof (Federal Court of Justice, Germany), however, considered that it could not be excluded that the use of the sign at issue on the front of clothing is only one of several possible types of use. For example, that sign could also be placed on the label sewn on the inside of garments, in which case the public could perceive it as a trade mark. The Bundesgerichtshof held that according to its own case law, this would suffice to conclude that the sign has the minimum distinctive character required for registration, but was uncertain whether this case law was in accordance with the order of the ECJ in Deichmann (C-307/11 P), according to which trade mark authorities are not required to extend their examination of the distinctive character to uses of a sign other than that recognised as the most likely. In these circumstances, the Bundesgerichthof asked the ECJ whether a sign has distinctive character when there are in practice significant and plausible possibilities for it to be used as an indication of origin in respect of the relevant goods or services, even if this is not the most likely form of use of the sign.

The judgment of the ECJ

The ECJ first of all considers that it “cannot a priori be excluded that a sign comprising a hashtag (…) is capable of distinguishing the goods and or services in respect of which registration is sought as coming from a particular undertaking” (paragraph 18). According to the ECJ, it is in fact possible that such a sign is capable of performing the essential function of a trade mark to indicate the commercial origin of the relevant goods or services.

The ECJ further recalls that the assessment of the perception of the average consumer, which is decisive in assessing the distinctive character of a sign, must be carried out in concreto taking into account, among other relevant facts and circumstances, the way in which the trade mark is used. However, the ECJ recognizes that there are cases in which the applicant has not made significant use of the sign yet, adding that the “applicant for a trade mark is not required to indicate or even to know precisely, on the date of the filing of the application or of the examination of that application, the use he will make of the mark applied for” (paragraph 22). In such circumstances, the factors for the assessment of the likely use of the sign can only be found in the “customs of the economic sector concerned” (paragraph 24).

In this regard, the competent authorities must take into consideration the “various uses” that are “practically significant” in the relevant economic sector (paragraph 25), but “qualify as irrelevant the uses which, whilst being conceivable in that economic sector, are not practically significant and therefore seem unlikely, except where the applicant has provided concrete evidence which, in his case, makes a use which is unusual in that sector more likely” (paragraph 26).

As to Deichmann (C-307/11 P), which seems to suggest that only the most likely use must be taken into account, the ECJ rules that the approach taken in that order “remains relevant only in those cases where it appears that solely one type of use is practically significant in the economic sector concerned” (paragraph 32).

Applying these principles to the case at hand, the ECJ notes that the referring court found that, in the clothing sector, it is customary to place a trade mark on both the exterior of the goods and the labels sewn on the inside of them and that the court thus identified two types of use which are practically significant in that sector. It is therefore for the referring court “to take those uses into consideration and assess whether [the average] consumer, on seeing those two types of placement, or at least one of them on a garment, will perceive the sign at issue as a trade mark” (paragraph 30) “and not simply as a decorative element or social message” (paragraph 31).