With the increasing trends of digital goods and services and others related to the internet, there has been a surge in the trademark registration of marks related to digital or the internet. Such artificial words are often registered as a trademark to denote certain product descriptions. In one of the latest issues, the term 'TOOLTIME' was granted registration of the trademark for the class of software and IT where the Federal Patent Court ruled that the mark was not descriptive.

As per the principle is concerned, for any mark to be registered as a trademark, the mark must not be descriptive. But in relation to goods concerning digital or internet-related things, new catchy word creations are registered as a trademark. These words are framed such that it forms a slight hint to the goods or service in that area. This was attempted when the applicant filed for registering the word 'Tooltime' as a trademark for the description of the software, digital such as contact management, data synchronization and also for office services; accounting and controlling as well as for (mobile) telecommunication services. The major question was whether the term 'Tooltime' was descriptive of software or not.

[Image Source: gettyimages]

German Patent office

The German Patent Office refused the registration of the mark owing to its descriptive nature and lack of distinctiveness. The patent office was of the view that the mark was too descriptive for the goods and services for which the registration is sought for. The claimed goods which were software and programs relating to deadlines and dates were intended to be used for the time management concerning the commercial activity of the company. And also in view of the descriptive nature of the mark, it is necessary to make the term free as per § 8 (2) No. 2 Trade Mark Law.  

Federal Patent Court

The applicant appealed this decision to the Federal Patent Court arguing that the mark 'Tooltime' is an imaginative neologism and not an independent term of the German or English language. The unique combination of the term tool and time makes it unusual in the German or English grammatical rules concerning “time, deadline, and clock time.”

The applicant was successful with the appeal where the Federal Patent Court overturned the Patent Office decision and annulled it in its entirety and ruled that the term 'Tooltime' was not devoid of distinctive character, making the trademark registration successful. The court observed that the word tool is recognized differently by various experts which means “tool, device, aid, computer utility program”, making the mark 'Tooltime' lacking an unambiguous conceptual concept. The term is considered descriptive if only one of the meanings describes the goods and service. This makes it completely unclear as to the meaning of 'Tooltime'. It could be a particularly suitable point in time (“time”) for the use of analog or digital tools (“tool”), the period (“time”) required by such a tool or computer utility (“tool”) for certain processes, or its service life.

Nevertheless, the court emphasized that a new word-formation does not mean a distinctive character under trademark law. If such a new word formation gives the meaning and represents an understandable factual statement as in this case, but the present mark has a different aspect altogether. This word 'Tooltime' consists of the combination of individual elements making it witness the unusual change.  The court added that a certain allusion to a certain meaning is inherent in speech marks, although this does not preclude them from being perceived as a designation. The term 'TOOLTIME' could therefore not be denied any distinctive character. Also since the mark is not descriptive, there is no need to keep it free.

Author: Saransh Chaturvedi an associate at Global Patent Filing,  in case of any queries please contact/write back us at support@globalpatentfiling.com.