In examining the distinctive character of a sign in respect of which registration as a trade mark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. In the absence of other indications to the types of use, the customs in the economic sector concerned that can be practically significant must be taken into account. Uses, whilst being conceivable in that economic sector, that are not practically significant and therefore seem unlikely must be qualified as irrelevant. Approach from paragraph 55 of the Deichmann case remains relevant only in those cases where it appears that solely one type of use is practically significant in the economic sector concerned.
AS applied to the DPMA for registration of the sign comprising the hashtag #darferdas? as a trade mark . The DPMA rejected the application, since the sign at issue was, in its view, devoid of any distinctive character. The court dismissed the action. It held that the sign at issue represented a sequence of characters and words joined together essentially composed of common German words ( “darf er das?”). The public would understand that question — placed, inter alia, on the front of tee-shirts — for what it is, namely a simple interrogative phrase. According to the referring court, it cannot be excluded that the use of the sign at issue on the front of clothing is one amongst several types of use. That sign could also be placed on the label sewn on the inside of garments. In that case, the public could perceive that sign as a mark, that is to say, as an indication of the commercial origin of the goods. The referring court questions whether a sign has distinctive character when there are in practice significant and plausible 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. Hereby reference is made to the Deichmann/BHIM case from 2012 which, at paragraph 55 held that OHIM was not obliged to extend the concrete examination of distinctive character uses of the mark applied for other than those recognised as the most likely.
The Court answers the question as follows:
"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 must be interpreted as meaning that in examining the distinctive character of a sign in respect of which registration as a trade mark is sought, all the relevant facts and circumstances must be taken into account, including all the likely types of use of the mark applied for. The latter correspond, in the absence of other indications, to the types of use which, in the light of the customs in the economic sector concerned, can be practically significant."
C‑541/18 - ECLI:EU:C:2019:725