The "POST" trademark
Can a word as general as "Post" really be monopolised as a trademark? The dispute over Deutsche Post's word mark shows how weak descriptive terms are as a trademark.
What was it about?
"Post" describes the service directly – such purely descriptive terms are in principle not protectable. Deutsche Post nevertheless obtained registration through what is known as acquired distinctiveness through use: the sign had established itself with the public as a trademark.
After the postal market was liberalised, competitors applied to cancel the trademark. The question was whether "POST" could remain registered – and how far the protection extends.
The course of events
Registration through acquired distinctiveness
"POST" is registered as an established trademark despite its descriptive character.
Cancellation applications
Competitors want the trademark cancelled after the market opens.
BGH "POST II", 23.10.2008
The Federal Court of Justice overturns the cancellation: residual doubts fall on the applicant, not the owner.
Narrow scope of protection
Competitors may continue to use "Post" with distinctive additions (e.g. "TNT Post").
Registered, but weak
The "POST" trademark survived – but its scope of protection is narrow. Deutsche Post could not act against the use of "Post" with clearly distinctive additions.
What you take from it
Purely descriptive terms can be protected only with difficulty and – if at all – only weakly as a trademark. The more descriptive a sign, the narrower its scope of protection.
Whoever wants a strong, enforceable trademark is better off choosing a distinctive, characteristic sign rather than a generic word.
Sources
Federal Court of Justice, "POST II" decision of 23 October 2008, ref. I ZB 48/07; subsequent decisions of the Federal Patent Court; documented notably by markenmagazin:recht.
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This article is for information and does not constitute legal advice.