Local trademark law: The fate of Neuss trademarks

In principle, a trademark must be distinctive in order to be considered worthy of protection. In trademark law, a distinction is often made between conceptually distinctive and descriptive indications. A key aspect here is that geographical designations - such as "Neuss" - are generally not distinctive as an indication of location if they merely designate the place where the service is provided. The same generally applies to "Novesia" (the old Roman name for Neuss) and "Quirinus" (the patron saint and namesake of the city's largest church).

While "Neuss" stamps are regularly rejected by the official examiners Trademark applications for the terms "Novesia" or "Quirinus" because trade mark examiners do not always take sufficient account of the local context and the actual local circumstances. If, for example, the examiner had researched "Novesia" or "Quirinus" in more detail - e.g. via a Google search, which shows a whole 10 hit pages for "Quirinusstadt" - the lack of distinctiveness would probably have been noticed in many applications. The result: numerous trade marks with the terms Novesia and Quirinus are registered, although they should actually be classified as descriptive and therefore not worthy of protection.

One example that illustrates how problematic such entries can be is the rejection of the Trademark "WI IMMO" by the DPMA and the BPatG. The assumption here was that the name could indicate a connection to Wiesbaden - a case that shows that geographical references should always be treated with caution.

We would like to take a closer look at some local brands:

Brands with Novesia

• Novesia Healthcare
  This trademark was registered by the EUIPO under the registration number 018083385 for cosmetics, medical preparations and medical apparatus for a Neuss-based company. Despite the clear reference to Neuss - in the form of the old name - there is obviously a lack of the necessary distinctive character here, as the geographical name obviously describes the origin of the goods.

• Novesia Goldnut
  Ludwig Schokolade GmbH & Co. KG owns a number of brands that contain the term "Novesia" or "Novesia Goldnuss". The company originally came from Neuss. However, the choice of name raises questions, as it originally referred to the origin and could be misleading today, especially as production in Neuss has been discontinued. In the meantime, however, production has been stopped completely.

Brands with Quirinus

• QUIRINUS CUP
  The trademark "QUIRINUS CUP" registered under the registration number 3020160172521 would probably also not have been registered for a sports cup in Neuss if the examiner had paid attention and noticed the lack of distinctiveness.

• Quirinus - Beverage brand from Johann Hilgers
  The "Quirinus" brand for a sparkling wine "for Neuss" or "for Neussers" is for the Beverage trade Hilgers and shows another example of the problem: although a local reference is obvious as the "intended purpose", the trademark is on the borderline. Here, it must be carefully weighed up whether a distinctive character actually exists.

Neuss brands - stricter testing by the auditors

The examiners took a much stricter approach to stamps containing the addition "Neuss":

• neuss-marketplace.com
  This trademark was rejected as descriptive for advertising and communication. The name simply describes the marketplace in Neuss and therefore lacks the required unique character.

• Neuss district - First address on the Rhine
  The German application under the number 301205418, which concerned printed matter, was withdrawn. This presumably took place after the DPMA had indicated that the trademark could not be approved due to a lack of distinctive character.

• German Chamber Academy Neuss and German Chamber Academy Neuss on the Rhine
  Both trade mark applications, originally filed in Nice class 41 for education, cultural activities and orchestras, fell into the same trap. They describe a chamber orchestra in Neuss. A similar fate befell the application for the "Rheinische Bildungsakademie Rhein-Kreis Neuss".

• TOUR DE NEUSS
  The brand for the famous cycle race of the NRV 1888 was also withdrawn, presumably because it did not meet the requirements for distinctiveness under trademark law. "Tour de" is a reference to cycling races, as even cycling haters know the biggest cycling race in the world.

• Neuss blossoms
  This trademark, filed for cultural events, was rejected by the DPMA - again due to a lack of distinctiveness.

• law firm neuss and Organic honey Neuss
  Even laypersons will notice that these trademarks describe the protected products in a straightforward manner. The costs of the application would have been better donated to social causes.

• VfR 06 Neuss
  A curious case is the trademark "VfR 06 Neuss", which was successfully registered by a former president of the soccer club and is still held today, although he has long since parted company with the club in a dispute.

• Rheinpark-Center or Rheinpark-Center Neuss
  The example of the Rheinpark-Center is particularly curious. The operator attempted to register the trademark for a wide range of retail services and beyond. Although the trademark was initially rejected by the DPMA as "not at all distinctive", the operator took legal action in the form of proceedings before the BPatG and later before the BGH. Ultimately, the BPatG recognized that the trademark for the specific area of "Launching and deploying satellites for third parties" and distinctive character - a decision with which the BGH agreed. The BGH was even patronizing and even conceded the "operation of spas". As a result, the trademarks are still registered in these specific areas of application today. Although it seems extremely unlikely that our municipal mall will become a new Cape Canaveral, the trademarks were renewed for another 10 years in 2019.

Conclusion

The examples from Neuss show impressively how important it is to carefully examine the distinctiveness of trademark designations. While geographical designations such as "Neuss", "Novesia" and "Quirinus" basically only indicate the place where the service is provided and should therefore hardly be worthy of protection, numerous trade marks were nevertheless registered - often due to a lack of diligence on the part of the official examiner. The value of legal advice often also lies in "outwitting" the examiner in the best possible way.

However, the examples listed also show that the DPMA and the courts come to different assessments in individual cases. This underlines the need for careful examination before a trademark application is filed - especially if geographical references are involved.

Would you like to register a trademark with a connection to Neuss? We will be happy to help you on the way to trademark registration.