Why Descriptive Terms Are Refused by the DPMA

Under Section 8(2) No. 2 of the Markengesetz (MarkenG), trade marks that consist exclusively of signs or indications that may serve, in trade, to designate relevant characteristics of the goods or services are refused registration. This provision — known as the Freihaltebedürfnis (the need to keep certain terms free) — is one of the most frequently invoked grounds for refusal at the DPMA, and its rationale is central to the structure of German trade mark law.

The Freihaltebedürfnis Principle

The underlying philosophy of Section 8(2) No. 2 is that descriptive terms belong to the public domain and must remain available for all competitors to use when describing their own goods or services. No single undertaking should be allowed to monopolise language that other traders need for legitimate commercial communication. This is not merely a theoretical concern; it directly protects competition in the German market.

The DPMA will refuse a sign under this provision if it consists exclusively of indications that designate:

• Kind (Art): The type or category of the goods or services.
• Quality (Beschaffenheit): The standard, characteristics, or composition of the goods.
• Quantity (Menge): Numerals or terms indicating amount.
• Intended purpose (Bestimmung): What the goods or services are used for.
• Value (Wert): Terms indicating price or worth.
• Geographical origin (geographische Herkunft): Place names associated with the goods.
• Time of production: When the goods were made or the services rendered.
• Other characteristics: Any other attribute of the goods or services.

The DPMA’s Approach

The DPMA does not require proof that the term is currently used descriptively in the market. It is sufficient that the term may serve a descriptive function — meaning that competitors might reasonably need the term to describe their goods in future. This forward-looking assessment gives the DPMA broad discretion to refuse terms that are not yet in common descriptive use but could foreseeably become so.

The assessment is made in relation to the specific goods and services covered by the application. A term that is descriptive for one class of goods may be perfectly arbitrary for another. The context is always decisive.

Word Marks: The Highest Risk

Pure word marks (Wortmarken) face the highest risk of refusal under Section 8(2) No. 2. If the word, in its ordinary meaning, describes any characteristic of the goods or services, it will be refused. This applies not only to German-language terms but also to English words that are commonly understood by the German public — and the DPMA assumes a high level of English comprehension among German consumers. Terms like “Fresh” for food products, “Smart” for electronics, or “Global” for consulting services face almost certain refusal.

The DPMA also refuses combinations of descriptive terms where the combination itself remains descriptive. Simply joining two descriptive words does not create distinctiveness if the resulting combination is understood as a straightforward description.

Combined Marks: Logo Plus Word

A common strategy is to file a combined mark (Wort-/Bildmarke) that pairs a descriptive word with a logo or figurative element. This approach can succeed, but the DPMA applies an important condition: the figurative element must be independently distinctive. If the design is merely a standard font, a simple border, or a basic background colour, it does not cure the descriptiveness of the word element. The overall impression of the mark must be distinctive, and a generic or minimal design cannot achieve this.

This distinction is critical: while a combined mark that features a truly original, creative logo alongside a descriptive word may be accepted, a combined mark that merely presents a descriptive word in a slightly different typeface will be refused. The design must contribute something that shifts the consumer’s perception from “this describes the product” to “this identifies the source.”

Foreign Language Terms

The DPMA considers whether the relevant German consumer would understand the foreign-language term as descriptive. For English, the threshold is low: most English words used in business and commerce are considered understood by the German public. For less commonly spoken languages, the bar may be higher, but the DPMA can still refuse a term if it concludes that the relevant trade circles would understand its meaning.

Responding to a Descriptiveness Refusal

When a refusal is issued under Section 8(2) No. 2, the applicant can argue that the sign is not exclusively descriptive — for example, that it is suggestive rather than directly descriptive, requiring a mental leap to connect the sign with the goods. Alternatively, the applicant may argue that the term has no recognised descriptive meaning in relation to the specific goods listed. Where the term is clearly descriptive, the applicant may need to restrict the goods specification, add a distinctive figurative element, or pursue registration through acquired distinctiveness under Section 8(3) MarkenG.

Strategic Recommendations

• Avoid purely descriptive terms: Choose marks that are suggestive, arbitrary, or fanciful rather than directly descriptive.
• Assess English comprehension: Do not assume that English terms will avoid descriptiveness refusals in Germany. The DPMA treats widely understood English words as descriptive.
• Design matters for combined marks: If pairing a descriptive word with a logo, invest in a genuinely distinctive graphic element. A minimal font change or simple frame is insufficient.
• Keep Freihaltebedürfnis in mind: Even terms that seem slightly creative may be refused if competitors could reasonably need them to describe their goods or services.

Key Takeaway

Section 8(2) No. 2 keeps descriptive language available for all market participants. The DPMA applies this principle proactively, refusing terms that might serve a descriptive function even if they are not yet commonly used that way. Pure word marks are at the greatest risk, and combined marks only survive if their figurative component is independently distinctive. Applicants should prioritise inherently distinctive marks and, where descriptive elements are commercially important, pair them with genuinely original graphic design.