Understanding Distinctiveness Under German Trademark Law

The most fundamental requirement for trade mark registration in Germany is distinctiveness. Under Section 8(2) No. 1 of the Markengesetz (MarkenG), the German Patent and Trade Mark Office (DPMA) will refuse registration of any sign that is devoid of distinctive character in relation to the goods or services for which it is applied. This provision is the first and most common absolute ground for refusal — and the DPMA applies it rigorously.

What Distinctiveness Means

A trade mark must function as an indicator of commercial origin. Its essential purpose is to allow consumers to distinguish the goods or services of one undertaking from those of another. If a sign does not perform this origin-indicating function — if the relevant public would not perceive it as a trade mark — it lacks distinctive character and will be refused.

The assessment is made from the perspective of the average consumer of the relevant goods or services, who is reasonably well-informed, reasonably observant, and reasonably circumspect. The question is whether this consumer, encountering the sign in the marketplace, would understand it as identifying the commercial source of the goods rather than as a purely decorative, informational, or promotional element.

Categories That Commonly Fail

Advertising Slogans

Slogans and advertising phrases face a high threshold for registration at the DPMA. A slogan that merely promotes or praises a product — without any element of originality, surprise, or memorability that would cause the consumer to perceive it as a brand identifier — will be refused. Phrases like “Best Quality” or “We Care About You” are seen as general promotional statements, not trade marks. The DPMA considers whether the slogan is short, punchy, and capable of being remembered as an identifier (such as “Vorsprung durch Technik” or “Ich liebe es”), or whether it is merely an ordinary advertising message.

Simple Geometric Shapes

Basic geometric forms — circles, squares, triangles, rectangles, and simple combinations of these — are generally refused as lacking distinctiveness. The average consumer does not perceive a plain geometric shape as indicating a commercial source; it is understood as a basic design element or decorative feature. To overcome this objection, a geometric mark typically needs to display a degree of complexity, unusual proportions, or a distinctive arrangement that goes beyond what consumers would expect as mere ornamentation.

Single Letters and Numerals

Individual letters and numbers face particular scrutiny. A single letter in a standard font is generally considered non-distinctive because consumers are accustomed to letters being used as model designations, size indicators, or product codes rather than as brand identifiers. Stylisation or an unusual graphic presentation may help, but only if it is sufficiently distinctive to shift consumer perception.

Common Abbreviations

Abbreviations that are widely understood in the relevant trade or by the general public will typically be refused. If the abbreviation conveys a descriptive or commonly understood meaning in relation to the goods, it lacks the distinctive character needed for registration.

The DPMA’s Strict Approach

The DPMA is known across the international trade mark community for applying stricter distinctiveness standards than many other offices. Signs that might register without difficulty in the United States, China, or other jurisdictions are frequently objected to in Germany. This is particularly true for slightly descriptive or suggestive terms that the DPMA considers too close to the boundary of descriptiveness. Applicants accustomed to more lenient examination standards elsewhere should be prepared for a higher threshold when filing in Germany.

Responding to a Refusal

When the DPMA raises an objection under Section 8(2) No. 1, the applicant receives an official action (Beanstandung) granting at least one month to reply. This period is extendable on request. The response should argue why the sign is distinctive, potentially supported by evidence of how the sign is used and perceived in the market. If the DPMA maintains its objection, the applicant may file an administrative appeal (Erinnerung) to the DPMA itself, or a direct full appeal to the Federal Patent Court (Bundespatentgericht, BPatG). Decisions of the BPatG may, in rare cases, be further appealed to the Federal Court of Justice (Bundesgerichtshof, BGH).

Distinction from Descriptiveness

Section 8(2) No. 1 (lack of distinctiveness) and Section 8(2) No. 2 (descriptiveness) are separate grounds, but they overlap significantly and are usually examined together by the DPMA. A sign may be refused under both provisions simultaneously. The key distinction is that Section 8(2) No. 1 asks whether the sign functions as a trade mark in the eyes of the consumer, while Section 8(2) No. 2 asks whether the sign describes the characteristics of the goods. A sign can lack distinctiveness without being descriptive — for example, a simple geometric shape is not descriptive, but it may still lack distinctive character.

Strategic Recommendations

• Favour coined or arbitrary marks: Invented words (e.g., “Nivea”) and arbitrary marks (e.g., “Apple” for electronics) carry inherent distinctiveness and face minimal risk of refusal.
• Add complexity to geometric marks: If a geometric design is central to the brand, ensure it has sufficient visual complexity to be perceived as a trade mark rather than a basic decorative element.
• Make slogans memorable: For slogans, aim for brevity, wordplay, or an unexpected formulation that lifts the phrase above ordinary advertising language.
• Consider a figurative element: Where the word element alone may lack distinctiveness, combining it with a distinctive figurative element can help secure registration — but only if the figurative element is itself distinctive (see below regarding the “stylisation myth”).
• Anticipate DPMA strictness: If a sign is borderline, prepare arguments and evidence in advance, including examples of how the sign is used as a brand identifier in the German market.

Key Takeaway

Distinctiveness is the gateway to trade mark registration in Germany. The DPMA applies a strict standard: the sign must be capable of being perceived by the average consumer as an indicator of commercial origin. Slogans that merely promote, geometric shapes that merely decorate, and single letters or numbers that merely designate will not pass. Applicants should select marks that are inherently distinctive and be prepared to argue their case before the DPMA or on appeal to the Federal Patent Court.