Ichthyol trotz lexikalischer Hinterlegung weder freihaltebedürftig, irreführend noch beschreibend für das chemische Produkt.

A Lithuanian company has failed to have the Community trade mark ICHTHYOL, owned by a German chemicals company, declared invalid.

Ichthyol-Gesellschaft Cordes, Hermanni & Co. (GmbH & Co.) KG, applied for a CTM for ICHTHYOL in 1996 and the word mark was subsequently registered in 1998. The company had national registrations for all 15 member states at the time that the application for the CTM was accepted. Some of these registrations dated back to 1886.

In 2009, UAB “STORNAS”, a Lithuanian company, filed a request for a declaration of invalidity on absolute grounds.

The invalidity applicant argued that the word ichthyol was known as a generic term for a drug at the end of the 19th century. It provided documents including excerpts from medical journals, dictionaries and patents for products containing “ichthyol”. In particular, it said that the word “ichthyol” is found in entries in dictionaries and encyclopaedias published in a number of member states without any indication that it is a trade mark.

The CTM proprietor denied that the term “ichthyol” was descriptive and said that the product should instead be called “ammoniumbituminosulfonate” or “sulfonated shale oil”.

It also argued that the various seniority dates of the CTM were relevant for the point of time to be assessed as regards to absolute grounds for refusal.

The Cancellation Division disagreed with the CTM proprietor on this point, saying that a CTM constitutes its own right which is not dependent on national rights. As such, it considered whether the word “ichthyol” was descriptive at the time of the CTM application in 1996. In this context the Cancellation Division concluded that the prior registration of the CTM in many member states was a factor to be taken into account and that, taken as a whole, the evidence filed by the applicant did not convince it that the term was descriptive.

It ruled: “When assessing the evidence, it should be taken into consideration that terms coined as indications of origin for a new type of product entering into the market are often liable to be used in a descriptive manner. This applies in particular to pharmaceutical substances which, for instance, might only be offered by a particular company which possesses the required know-how for their manufacture or the relevant patent rights.”

It went on to say that assuming the term was descriptive in 1996, evidence with a higher probative value, such as excerpts from dictionaries for pharmaceutical or cosmetic terms or statements from trade or professional associations, would have been required.

The applicant had also argued that the CTM should be declared invalid on the grounds that it would deceive the public because it constitutes a descriptive term for a specific substance which might not be included in the goods as registered. Since the Cancellation Division had already ruled that the mark was not descriptive, this argument also failed. However, the Cancellation Division went on to say that even if the term were descriptive, the CTM would not be deceptive since, in principle, it is not impossible for the goods to contain the substance.

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