Judgment;Summary — ECLI:EU:C:2019:725
Date: 2019-09-12
Language of the case: German
Court formation: Fifth Chamber
Subject matter: Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Germany

Anonymised version 
Translation C-541/18 — 1 
Case C-541/18 
Request for a preliminary ruling 
Date lodged: 
21 August 2018 
Referring court or tribunal: 
Bundesgerichtshof (Germany) 
Date of the decision to refer: 
21 June 2018 
Applicant and appellant on a point of law: 
AS 
Other party: 
Deutsches Patent- und Markenamt  
  
BUNDESGERICHTSHOF 
(FEDERAL COURT OF JUSTICE) 
ORDER 
[...] 
of 
21 June 2018 
in the matter of an appeal on a point of law 
AS, [...] Cologne, 
applicant and appellant on a point of law, 
EN 
REQUEST FOR A PRELIMINARY RULING OF 21. 6. 2018 — CASE C-541/18 
 
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[...] 
concerning trade mark application No 30 2015 059 764.3 
[Or. 2] 
On 21 June 2018, the First Civil Chamber of the Bundesgerichtshof [...] 
made the following order: 
I. The proceedings are stayed. 
II. For the purposes of the interpretation of Article 3(1)(b) of Directive 
2008/95/EC of the European Parliament and of the Council of 
22 October 2008 to approximate the laws of the Member States 
relating to trade marks (OJ 2008 L 299, p. 25), the following question 
is referred to the Court of Justice of the European Union for a 
preliminary ruling: 
Does a sign have distinctive character when there are in practice 
significant and obvious possibilities for it to be used as an indication of 
origin in respect of goods or services, even if this is not the most likely 
form of use of the sign? [Or. 3] 
Grounds: 
1 I. The Trade Mark Division of the Deutsches Patent- und Markenamt 
(German Patent and Trade Mark Office) refused the application for the word mark 
#darferdas? 
– in so far as still germane — in respect of the following goods in Class 25 
clothing, in particular tee-shirts; footwear; headgear 
due to lack of distinctive character. The applicant’s appeal was unsuccessful 
(Bundespatentgericht (Federal Patent Court), order of 3 May 2017 — 27 W(pat) 
551/16, [...]). By the appeal on a point of law, in respect of which leave has been 
granted, the applicant continues to pursue its request for registration. 
2 II. The Bundespatentgericht found that the word mark applied for is devoid of 
distinctive character within the meaning of Paragraph 8(2)(1) of the Markengesetz 
(Trade Mark Law, ‘the MarkenG’) in respect of the goods mentioned. It stated the 
following in this regard: 
3 The pure word component of the sign applied for is an immediately 
comprehensible German question which is correspondingly indicated by the 
question mark. Irregularly writing the words together with the first letter in lower 
case is a stylistic device which is not unusual in advertising and is also widespread 
GERMAN PATENT AND TRADE MARK OFFICE 
 
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in hashtag formulation. When assessing the contested sign in its entirety, the 
targeted public will understand the hash symbol ‘#’ placed at the front as being an 
indication that the slogan-like designation of a discussion point on the question 
‘Darf er das?’ [‘Can he do that?’] is involved. It is true that neither a descriptive 
content nor a close descriptive connection to the goods applied for can be 
garnered from the sign. However, the latter involves a sequence of characters 
made up of common German [Or. 4] words which will always be understood by 
the targeted public merely as such and not as a means of drawing a distinction. 
4 That also and precisely applies in connection with the claimed goods ‘clothing, in 
particular tee-shirts; footwear; headgear’. These are often provided with ‘fun 
sayings’ or statements of avowal. The designation applied for is such an ‘outward 
message’. Therefore, use of the sequence of characters as clearly visible lettering 
on the front or back of items of clothing such as tee-shirts or as discernible 
lettering on headgear or footwear and therefore as a motif is the most likely and at 
the same time a practically significant form of use of the sequence of characters. 
Other uses of the sign applied for which are likewise conceivable, but less likely 
and also practically not as significant, for example on the label of an item of 
clothing, are not important. With the predominant form of use as ‘outward 
message’, the targeted public will understand the sign applied for as seeking to 
prompt reflection or discussion on the subject ‘Darf er das?’. That is not altered by 
the fact that hashtags originally come from the field of social media. This is 
because they are also used in the analogue field and in particular in decorative 
form on clothing and were already used in this way when the sign was applied for. 
The targeted public sees a clearly visible imprint of the sequence of characters 
‘#darferdas?’ on clothing, headgear or shoes merely as a design feature and not as 
an indication of origin. [Or. 5] 
5 III. The success of the appeal depends on whether Article 3(1)(b) of Directive 
2008/95/EC to approximate the laws of the Member States relating to trade marks 
(the Trade Marks Directive) is to be interpreted as meaning that a sign has 
distinctive character when there are in practice significant and obvious 
possibilities for it to be used as an indication of origin in respect of the goods or 
services, even if this is not the most likely form of use of the sign. This question 
cannot be answered unequivocally in consideration of the case-law of the Court of 
Justice of the European Union. For that reason, prior to the decision on the appeal, 
the proceedings are to be stayed and this question is to be referred to the Court of 
Justice of the European Union for a preliminary ruling pursuant to Article 267, 
first paragraph, heading (b), and third paragraph, TFEU. 
6 1.  Under Paragraph 8(2)(1) MarkenG, trade marks which are devoid of any 
distinctive character in respect of the goods or services may not be registered. This 
provision transposes Article 3(1)(b) of the Trade Marks Directive into national 
law and is therefore to be interpreted in conformity with that directive. Under 
Article 3(1)(b) of the Trade Marks Directive, trade marks which are devoid of any 
distinctive character may not be registered. 
REQUEST FOR A PRELIMINARY RULING OF 21. 6. 2018 — CASE C-541/18 
 
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7 2. Distinctive character within the meaning of Article 3(1)(b) of the Trade 
Marks Directive and Paragraph 8(2)(1) MarkenG is a trade mark’s inherent 
(specific) ability to be construed by the public as a means of drawing a distinction 
which identifies the goods or services in question as coming from a particular 
undertaking and therefore distinguishes the goods or services from those of other 
undertakings. This is because the main function of a trade mark consists in 
guaranteeing the identity of the origin of the marked goods or services [...]. 
8 No distinctive character is possessed by signs which have a descriptive content 
which is immediately understood as such without any ambiguity in respect of the 
goods or services in question. In the case of such descriptive indications, there is 
no real evidence that the public understands them as constituting a means of 
drawing a distinction. Even indications which relate to circumstances which do 
not directly concern the product or the service itself are devoid of distinctive 
character if a close descriptive connection to the goods or services applied for is 
made by the indication and there is therefore justification for assuming that the 
public immediately understands the descriptive content as such without any 
ambiguity and does not see the designation as a means of distinguishing the origin 
of the goods or services applied for [...]. Nor is distinctive character possessed by 
trade marks which consist of common words in the German language or in a 
familiar foreign language and which are always understood by the targeted public 
merely as such and not as a means of distinction [...]. [Or. 7] 
9 3.  The Bundespatentgericht assumed that, according to these principles, the 
trade mark applied for – ‘#darferdas?’ – is devoid of distinctive character because 
it is a sequence of characters made up of common German words which will 
always be understood by the targeted public merely as such and not as a means of 
drawing a distinction. 
10 (a)  The appeal unsuccessfully challenges the Bundespatentgericht’s finding 
that the word mark applied for – ‘#darferdas?’ – is a sequence of characters made 
up of common German words. 
11 (aa)  The Bundespatentgericht assumed that the pure word component of the 
sign applied for is an immediately comprehensible German question which is 
correspondingly indicated by the question mark. Irregularly writing the words 
together with the first letter in lower case is a stylistic device which is not unusual 
in advertising and is also widespread in hashtag formulation. When assessing the 
contested sign in its entirety, the targeted public will understand the hash symbol 
‘#’ placed at the front as an indication that the slogan-like designation of a 
discussion point on the question ‘Darf er das?’ is involved. 
12 (bb) The appeal contends that, contrary to the opinion of the 
Bundespatentgericht, the coherent sequence of characters does not produce a 
common word, let alone a comprehensible question. A hash symbol at the 
beginning of a question is, it is argued, completely unusual. Nor, it is argued, is a 
hashtag involved, as punctuation marks cannot be part of a hashtag. When 
GERMAN PATENT AND TRADE MARK OFFICE 
 
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considered overall, the hash symbol together with the lower-case lettering and 
writing as one word defamiliarises the question ‘Darf er das?’ in such a way that 
the targeted public does not interpret the sequence of characters as a question. 
[Or. 8] 
13 (cc)  The appeal cannot succeed on this ground. It thereby merely replaces the 
assessment of the court dealing with the substantive issue with its own point of 
view, without demonstrating that the Bundespatentgericht erred in law. 
14 (1)  The Bundespatentgericht found, without erring in law, that the targeted 
public recognises a word sequence in the sign applied for. According to the 
findings of the Bundespatentgericht, it is common practice to use lower-case 
lettering and to write word sequences together after a hash symbol. In support of 
its opinion, the Bundespatentgericht referred to hashtags such as #aufschrei, 
#blacklivesmatter or #jesuischarlie which were already well known at the time of 
the application. It also assumed that the targeted public could understand the short 
sequence of characters consisting for its part of just three likewise short words 
without difficulty at a glance. It also found, and this is not challenged in the 
appeal, that hashtags are terms or word sequences which serve as catchwords or 
for designating discussion points, in particular on social media such as Twitter, 
and refer or link to further contributions on that catchword. According to the 
findings of the Bundespatentgericht, the frequent use of hashtags in advertising 
and on social media means that the targeted public is accustomed to understanding 
and mentally separating word sequences which are written together in lower case, 
even in foreign languages. In this respect, the hash symbol contributes to the 
comprehensibility of the word sequence and, contrary to the opinion expressed in 
the appeal, is not detrimental thereto. The public expects a hash symbol to be 
followed by a phrase written as one word and therefore prepares itself in advance 
for the necessary mental separation. 
15 (2)  The Bundespatentgericht also assumed without erring in law that the word 
sequence will be instantly understood as a question due to the question mark at its 
end. In this respect, it referred to the correct punctuation mark, the [Or. 9] correct 
grammatical syntax and the few and short words. This cannot be disputed as a 
matter of law. Contrary to the opinion expressed in the appeal, the hash symbol 
placed at the front does nothing to change this. In this case, it is not of decisive 
importance that the word sequence applied for does not constitute a hashtag in the 
actual, technical sense; that is excluded simply because the link inherent to a 
digital hashtag does not exist in the case of use on clothing. It is therefore of no 
importance that a question mark cannot be part of a hashtag in the case of use in 
digital media. It is instead decisive that the targeted public expects a catchword or 
a current subject of discussion in the case of a hash symbol, with which it is 
constantly confronted both on social media and in traditional media [...]. Such a 
subject may also be addressed with a question. 
16 (b)  The appeal also takes issue with the Bundespatentgericht’s assumption that 
the trade mark applied for is always understood by the targeted public merely as a 
REQUEST FOR A PRELIMINARY RULING OF 21. 6. 2018 — CASE C-541/18 
 
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sequence of characters made up of common German words and not as a means of 
drawing a distinction. 
17 (aa)  The Bundespatentgericht assumed that account is to be taken of the most 
likely form of use of the sign when examining the ground for refusal based on 
lack of distinctive character. Other uses which are likewise conceivable, but less 
likely and also practically not as significant, are not important. In relation to the 
goods in question here, use of the sequence of characters as clearly visible 
lettering on the front or back of items of clothing such as tee-shirts or as 
discernible lettering on headgear or [Or. 10] footwear is the most likely and at the 
same time a practically significant form of use. Although other uses of the sign in 
respect of these goods, for example on the label of an item of clothing, are 
likewise conceivable, this is less likely and also practically not as significant. With 
the predominant form of use as an ‘outward message’, the targeted public will 
understand the sign as prompting reflection or discussion on the subject ‘Darf er 
das?’. The targeted public sees a clearly visible imprint of the sequence of 
characters ‘#darferdas?’ on clothing, headgear or shoes merely as a design feature 
and not as an indication of origin. 
18 (bb)  The Bundespatentgericht correctly assumed that account is to be taken of 
the identification practices in the relevant sector of goods when examining 
whether the ground for refusal based on lack of distinctive character applies [...]. 
These include the way in which means of identification are customarily used in 
the case of the goods concerned, and in particular the position at which they are 
affixed [...]. In the clothing sector, the public finds differently sized imprints of 
signs protected under trade mark law affixed to items of clothing [...]. The answer 
to the question of whether the public interprets a sign affixed to an item of 
clothing as an indication of the origin of the item of clothing or as a mere 
decorative element may vary according to the nature and position of the sign. In 
the case of images, motifs, symbols and words which are affixed to the front or 
back of items of clothing, the public does not generally assume [Or. 11] that an 
indication of origin is involved; whether this is the case instead requires an 
assessment in each individual case [...]. By contrast, the public will usually 
identify an indication of origin in signs found on sewn-in labels on the inside of 
items of clothing [...]. 
19 (cc)  The Bundespatentgericht assumed that account is to be taken of the most 
likely form of use of the sign when examining the ground for refusal based on 
lack of distinctive character. Other uses which are likewise conceivable, but less 
likely and also practically not as significant, are, in its view, not important. It is 
questionable whether this opinion is correct. In the view of the present Chamber, 
account is solely to be taken of the most likely form of use of the sign only when 
other possible forms of use of the sign are not practically significant or not 
obvious. 
20 (1)  The Court of Justice of the European Union has ruled in respect of a 
figurative mark that no obligation to extend, in the registration procedure, the 
GERMAN PATENT AND TRADE MARK OFFICE 
 
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examination of the distinctive character to uses of the trade mark applied for other 
than that recognised as the most likely by the examining body using its expertise 
in this area can be garnered from Article 7(1)(b) of the CTMR/EUTMR (Court of 
Justice, order of 26 April 2012 — C-307/11 P, [...] — Deichmann SE [edged 
chevron]). The interpretation of Article 7(1)(b) of the CTMR/EUTMR by the 
Court of Justice of the [Or. 12] European Union is also decisive for the 
interpretation of Paragraph 8(2)(1) MarkenG. The absolute ground for refusal of 
lack of distinctive character regulated in Paragraph 8(2)(1) MarkenG is 
necessarily prescribed by Article 3(1)(b) of the Trade Marks Directive and is 
therefore to be interpreted in conformity with that directive [...]. The directive 
provision corresponds to Article 7(1)(b) of the CTMR/EUTMR. Even though 
national trade mark law and EU trade mark law are independent legal systems, 
findings regarding EU trade mark law may be used when applying the trade mark 
law based on the Trade Marks Directive (cf. Court of Justice, judgment of 
16 September 2015 — C-215/14, [...]). 
21 (2)  According to the case-law of the Bundesgerichtshof, not every conceivable 
use of the sign has to be use as a trade mark for the assumption of distinctive 
character in the registration procedure. It is sufficient if there are practically 
significant and obvious possibilities of using the sign applied for in the case of the 
goods and services for which protection is claimed in such a way that it is 
immediately understood by the public as a trade mark [...]. In the view of the 
present Chamber, this case-law is in line with the aforementioned comments by 
the Court of Justice of the European Union in the ‘Deichmann SE’ decision. In the 
[Or. 13] opinion of the present Chamber, those comments are to be understood as 
meaning that, when assessing distinctive character, the examination is to be 
restricted to the most likely form of use only if the other forms of use in 
consideration are not practically significant or obvious [...]. There is no 
justification for refusing to register a trade mark due to lack of distinctive 
character if there are in practice significant or obvious possibilities to use the trade 
mark as an indication of origin in respect of the goods or services claimed. 
22 (3)  The question is material to the decision. 
23 The Bundespatentgericht assumed that, in relation to the goods here in question, 
use of the sequence of characters as clearly visible lettering on the front or back of 
items of clothing such as tee-shirts or as discernible lettering on headgear or 
footwear is the most likely and at the same time a practically significant form of 
use. Although other use of the sign in respect of those goods, for example on the 
label of an item of clothing, is likewise conceivable, this is less likely and also 
practically not as significant. With the predominant form of use as ‘outward 
message’, the targeted public would understand the sign as prompting reflection or 
discussion on the subject ‘Darf er das?’. The targeted public sees a clearly visible 
imprint of the sequence of characters ‘#darferdas?’ on clothing, headgear or shoes 
merely as a design feature and not as an indication of origin. [Or. 14] 
REQUEST FOR A PRELIMINARY RULING OF 21. 6. 2018 — CASE C-541/18 
 
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24 It is true that the appeal unsuccessfully claims that decorative use is neither the 
most likely nor a practically significant or obvious use of the sign. In the case of 
items of clothing, it is instead obvious that a registered trade mark is at least also 
used on sew-in labels. Even when used as lettering on items of clothing, the sign 
could indicate the commercial origin, because it is not a ‘fun saying’ or other 
statement of avowal. The appeal therefore again replaces the assessment of the 
court ruling on the substance with its own, without demonstrating that the 
Bundespatentgericht erred in law. 
25 However, in respect of the appeal proceedings, it is to be assumed in favour of the 
applicant, due to lack of findings to the contrary by the Bundespatentgericht, that, 
in addition to decorative use, there are also in practice other significant and 
obvious possibilities of using the sign in respect of the goods in question here, for 
example on the label of an item of clothing. This is not affected by the fact that, 
according to the findings of the Bundespatentgericht, such use in comparison with 
use for instance as lettering on the front of an item of clothing is less likely and 
also practically not as significant and obvious. If the examination of distinctive 
character is to be based on all practically [Or. 15] significant or obvious forms of 
use of the sign, the sign applied for cannot be said to want entirely distinctive 
character according to the previous findings. 
[...]