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Austria: Condoms and music

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The case reported here concerns the application for registration of a word mark GROOVE in relation to "condoms" (class 10).

The Austrian Patent Office denied registration of the trade mark for descriptiveness. It found that the majority of the target public would consist of adults with an education in English language. These adults would know that GROOVE means "gutter, channel, furrow" in English. If condoms had grooves, this could have a stimulating effect, which consumers were also aware of. Another meaning coming from the field of music, where GROOVE is understood as a rhythmic element, was not in the foreground, especially since the first meaning of the word gave a meaningful connection to the relevant goods.

In its appeal, the applicant argued that the word GROOVE had received an entry in the German dictionary "Duden" as being attributed to (modern) musical jargon. Accordingly, the average consumer, being reasonably well informed and reasonably observant and circumspect, would mainly consider this meaning and not find any descriptive meaning in the mark GROOVE for the goods "condoms".

The Appeal Court followed this argumentation and allowed the appeal. It found that the term GROOVE is evidentially an Anglicism in German which has become so independent of its English ancestral form that it is attributed solely to (modern) musical jargon and essentially refers to music with rhythm and tempo. Other German loan words such as "groovy" and "grooven" would also refer to this understanding. In view of its independence in German, the word GROOVE would not, after its literal possible translation from English, be interpreted as "gutter, groove, furrow", but would be understood immediately and directly as a reference to the understanding of "music with the right rhythm and tempo". This being the basis for the prognosis of the understanding by the relevant consumers in relation to the specific scope of protection (namely, contraception), the Court of Appeal therefore did not see any obvious factual or meaningful connection between this scope of protection and the consumers' understanding of GROOVE. Starting from the abstract scope of protection, it was not possible without further thought operation to associate a sign which is musically connoted with contraceptive goods. It is not obvious to understand the GROOVE trade mark as information on the type of goods (condoms) marked with it, which is why the sign is not descriptive.

This decision acknowledges the fact that an English word which has been adopted into the German language and has received an entry in the German dictionary can lose its original literal meaning in the understanding of the Austrian public.

Andrea Brandstetter

SONN & PARTNER Patentanwälte

Riemergasse 14

A-1010 Vienna, Austria

Tel: +43 1 512 84 05

Fax: +43 1 512 98 05

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