To anticipate the answer: Yes, it can (under certain conditions).
The trade mark office for class 33 of the German Patent and Trade Mark Office rejected the application for registration by decision of 15 May 2019 on the ground of lack of distinctive character. The Trade Mark Office stated as a reason that the trade mark applied for for class 33 was an indication of intended purpose because it indicated that the goods and services claimed were a good match for the poultry “partridge”. Partridges are considered by gourmets to be a delicacy, both because of their eggs and their meat, and they were once a favourite prey of the nobility. Today they are kept as pets or farm animals. Thus, the sign “partridge”, in its promotional form, is limited to a purely factual indication without any recognisable content indicating its origin.
By order of 29 February 2020, the Federal Patent Court (Ref.: 26 W (pat) 539/19) set aside the decision of the trade mark office for Class 33 and stated that the sign “Partridge” could not be denied any distinctive character for the goods and services claimed.
Distinctiveness within the meaning of § 8 para. 2 No. 1 MarkenG is the (concrete) ability of a mark to be perceived by the public as a distinctive sign that the goods or services in question come from a particular undertaking and thus distinguish those goods or services from those of other undertakings. Only the absence of any distinctive character would constitute a ground for refusal, so that a generous standard would have to be applied. Any distinctive character, however slight, is sufficient to overcome the ground for refusal. The date of filing of the application for registration of the mark is decisive for the assessment of distinctive character.
Word signs would be considered to be devoid of distinctive character if the target public were to attribute to them merely a descriptive conceptual content which is in the foreground, or if it consisted of common words or phrases from the German language or a well-known foreign language which the public would always understand only as such and not as a means of distinguishing them, for example because of their use in advertising. Furthermore, indications which refer to circumstances which, although not directly relevant to the goods or services claimed, establish a close descriptive link with them and therefore justify the assumption that the public will readily grasp the descriptive content of the term and will not perceive the term as a means of distinguishing their origin are also devoid of distinctive character. In that regard, it is sufficient that a word sign, even if it has not hitherto been used descriptively for the goods and services claimed or even if it is a neologism, may designate, in one of its possible meanings, a characteristic of those goods and services.
The Federal Patent Court went on to say that if these requirements were applied, the word sign “partridge” would not have the necessary distinctive character for the goods and services claimed and reproduced verbatim above. According to the Bundespatentgericht, a partridge is a pigeon-sized species of bird weighing up to 450 g, of the order of henbirds with back and wing covers of grey-brown colouring, with a rust-red head and neck and a dark brown spot on the belly, the population of which has declined by 94% throughout Europe since 1980, according to a data collection of the European Bird Census Council.
More information on a partridge follows. In conclusion, the term “partridge” is in any case not descriptive of the non-alcoholic and alcoholic beverages mentioned in detail.
Accordingly, the term “partridge” can be registered as a trade mark for the goods and services claimed. Something different would apply if the sign “partridge” were to be registered for “poultry and game” in Class 29. In such a case, it is likely to lack the necessary distinctive character.
