The "Eisblock" decision of the BPatG - DPMA has to examine absolute grounds for refusal in relation to each of the goods and services claimed

In March of this year, the Federal Patent Court modified its case law on the requirements for the statement of reasons for a decision to reject a trademark application with the decision “Eisblock”.

Up to now, the BPatG has only affirmed a substantial procedural deficiency within the meaning of Sec. 70 (3) No. 2 MarkenG if the reasons given by the trademark office did not indicate which reason was decisive in fact and law for the decision to reject the application with respect to the goods or services claimed, or if no reasons were given at all (cf. BPatG BeckRS 2019, 2127 – MOVE, with reference to BGH GRUR 2003, 546, 548 – TURBO TABS). A deficient or incomplete statement of reasons was not considered as a procedural deficiency. In practice, this led to the fact that trademark applications were more often rejected with rather formulaic reasons – and without discussing the claimed goods and services in detail.

The Federal Patent Court has now opposed this official practice with the decision on the word mark “Eisblock” issued on 30 March 2020. The 26th Senate decided with regard to the application for the trademark applied for goods and services in classes 25, 33 and 41 that it would be a substantial procedural violation within the meaning of Sec. 70 (3) No. 2 MarkenG if not all goods and/or services claimed were taken into account when examining the absolute grounds for refusal under Sec. 8 (2) Nos. 1 to 4 MarkenG.

Although a global statement of reasons is sufficient if the same considerations concern a category or group of the goods and/or services applied for, this would, however, only mean that the same reasoning relevant for different goods and/or services would not have to be repeated for each individual item of the list of goods/services, but that groups of goods and/or services could be assessed together. The duty to state reasons would be violated if different goods and/or services were treated equally without further justification or were not assessed at all (GRUR-RS 2020, 7394). The rejection of trademark applications with only general reasons can therefore now be countered by referring to the “Eisblock” decision of the Federal Patent Court.