01-02-2006

German Patent and Trademark Office orders deletion of the trademark "POST"




With decision of 14 December 2005 the German Patent and Trademark Office (DPMA) has ordered the cancellation of the trademark "POST", which had been registered under the name of Deutsche Post AG (DPAG)

Headed by the Federal Association of International Express and Courier Services (Bundesverband Internationaler Express- und Kurierdienste e.V. - BIEK) legally represented by Dr. Søren Pietzcker of Heuking Kühn Lüer Wojtek in Hamburg, competitors filed a motion for cancellation of the trademark "POST" with the DPMA. This was based on the reasoning that the name refers predominantly to a general service function. In addition, the designation "POST" has not achieved a secondary meaning.

This, however, was a requirement for the market penetration asserted by DPAG. The DPMA has now confirmed this in its decision and made it clear that "POST" was deemed to be a "generic term". Thus, the DPMA has allowed the motion for cancellation to its full extent. Some county and higher regional courts, which had to decide on the likelihood of confusion between "POST" on one hand and for example "DIE BLAUE POST" "The blue Post), "OSTSEE-POST" (Baltic Sea Post) or "TNT Post Deutschland" (TNT Post Germany) on the other hand, saw it the same way and denied the likelihood of confusion, based on the very low distinctiveness of the term "POST". This view is now further strengthened by the decision of the DPMA.

Even if DPAG should appeal against the decision of the DPMA, the convincingly well-founded decision of the DPMA should give the competitors courage to defend themselves against attacks by DPAG based on the use of the term "POST". Many competitors did not defend themselves against such attacks because they did not want to or were not able to bear the high costs based on the value in dispute of € 500.000,00, which was often set by DPAG.

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