Proving Your Brand: Acquired Distinctiveness in Germany

When a trade mark is refused by the DPMA on the grounds that it lacks distinctiveness or is descriptive, there is a path to registration if the mark has, through intensive use, become recognised by consumers as identifying a specific commercial source. This is the doctrine of Verkehrsdurchsetzung — acquired distinctiveness (sometimes translated as “establishment in trade circles”) — codified in Section 8(3) MarkenG. It is a powerful rescue mechanism, but one that demands rigorous evidence.

The Legal Basis

Section 8(3) provides that the absolute grounds for refusal under Section 8(2) Nos. 1 to 3 — lack of distinctiveness, descriptiveness, and customary designations — shall not apply if, prior to the date of the decision on registration, the mark has become established in the relevant trade circles as a consequence of the use made of it in relation to the goods or services for which the application was filed.

The critical elements of this provision are: the distinctiveness must be acquired before the decision on registration (not before the application date, as in some other jurisdictions); the establishment must be among the relevant trade circles (the consumers or professionals who actually encounter the goods); and the use must relate specifically to the goods or services in the application.

The 50 Percent Threshold

German case law has established a clear quantitative benchmark for Verkehrsdurchsetzung: the applicant must demonstrate that approximately 50 percent of the relevant public recognises the sign as a trade mark for the goods or services in question. This is a significantly higher threshold than in many other jurisdictions, where acquired distinctiveness may be established through a qualitative assessment of various factors.

For descriptive signs, the threshold is particularly strict: because the sign’s primary meaning is descriptive, the applicant must demonstrate that a majority of relevant consumers have shifted their understanding from “this describes the product” to “this identifies the source.” The more descriptive the sign, the harder this shift is to prove.

The Evidence: Consumer Surveys

The cornerstone of a Verkehrsdurchsetzung claim in Germany is a demoscopic survey (Verkehrsbefragung) — a consumer recognition survey conducted by a reputable market research institute in accordance with established methodological standards developed through German case law. The survey must:

• Target the correct audience: The sample must represent the relevant trade circles for the goods or services in question. For consumer goods, this is the general purchasing public; for specialist products, it may be limited to professionals or industry participants.
• Ask the right questions: The survey must determine whether respondents recognise the sign as a trade mark indicating a specific commercial source, not merely as a descriptive term. Open-ended questions are preferred to avoid leading the respondent.
• Be methodologically sound: Sample size, geographic distribution, statistical validity, and questionnaire design must all meet the standards established by precedent. Courts have developed specific requirements for the design of Verkehrsbefragungen, and deviations from these standards can undermine the evidentiary value.
• Be conducted within Germany: The survey must measure recognition among German consumers. International survey data is not a substitute.

Supporting Evidence

While the consumer survey is the most important piece of evidence, the DPMA also considers supporting documentation, including:

• Turnover and sales data: Annual revenue figures for goods sold under the mark in Germany, broken down by year.
• Advertising expenditure: Annual spending on advertising and promotion in the German market, including the media channels used.
• Market share: Evidence of the mark’s share of the relevant market in Germany.
• Duration and continuity of use: The length of time the mark has been used in Germany without interruption.
• Geographic reach: Evidence that the mark is used across Germany, not limited to a single region.
• Media coverage: Press articles, trade publications, and editorial references in German media.

Timing: Before the Decision

A distinctive feature of the German system is that the relevant date for assessing Verkehrsdurchsetzung is the date of the decision on registration — not the application filing date. This means the applicant can continue building evidence of acquired distinctiveness after filing and submit it during the examination or appeal process. The evidence (such as a consumer survey) may be collected after the filing date, but it must demonstrate that the mark was established at or before the time of the decision.

Limits of Verkehrsdurchsetzung

Acquired distinctiveness can overcome refusals under Section 8(2) Nos. 1 to 3, but it cannot overcome other absolute grounds for refusal. Marks that are deceptive, contrary to public order, or that incorporate prohibited state emblems cannot be saved by Verkehrsdurchsetzung. Additionally, acquired distinctiveness does not protect against conflicts with earlier rights — a mark that has acquired distinctiveness can still be challenged and cancelled in opposition or invalidity proceedings based on a confusingly similar earlier mark.

Strategic Recommendations

• Commission a professional survey: If you intend to claim Verkehrsdurchsetzung, engage a reputable German market research institute to conduct a survey that meets established precedent standards.
• Prepare comprehensive supporting evidence: Supplement the survey with turnover data, advertising expenditure, market share, and media coverage specific to the German market.
• Plan for the long term: Achieving 50 percent recognition typically requires years of intensive use and promotion in Germany. This is not a quick remedy.
• File a distinctive mark in parallel: While building evidence for a descriptive mark, file an inherently distinctive mark to secure immediate protection.

Key Takeaway

Verkehrsdurchsetzung is the safety valve in the German trade mark system, allowing marks that are inherently non-distinctive or descriptive to be registered once they have genuinely become established as source identifiers. However, the 50 percent recognition threshold and the requirement for a professionally conducted consumer survey make this a demanding and resource-intensive process. It is a path best suited to established brands with a strong, well-documented presence in the German market.