Easing of practice by IPI in trademark registration proceedings (I)
The Institute of Intellectual Property (IGE) is easing its registration practice regarding references to features following Federal Court decision 4A_158/2022 of Sepetember 8, 2022.
Up to now, the IPI has in practice rejected signs for belonging to the public domain according to Art. 2 lit. a Trademark Law (MSchG), which are limited to a reference to a motif which is common for the goods concerned (cf. Guidelines in Trademark Matters, Part 5, No. 188.8.131.52.3). In the decision 4A_158/2022 of September 8, 2022 concerning BUTTERFLY, the Federal Supreme Court ruled that that a common-use reference to the features is only present if the motif is characteristic/typical for the goods concerned and, moreover, is not also common for other goods.
Against this background, the IPI intends to ease its registration practice and will submit the relaxation of practice in detail to interested parties for comment by February 17, 2023. The effective date of the new practice will be announced at a later date; applications to be processed according to the new practice in the meantime can be filed with a request for suspension.