With a decision served on 10 April 2007, the Federal Patent Court dismissed the Deutsche Post AG (DPAG) appeal, thereby confirming the cancellation decision of the German Patent and Trademark Office (DPMA). As a result, the cancellation order regarding the „POST” trademark continues to be in existence. However, the Federal Patent Court allowed the appeal, so the cancellation is not yet legally effective. BIEK assumes that DPAG appeal to the Federal Supreme Court (BGH) which, however, the BGH will likewise reject.
On 14 December 2005, the DPMA had already ordered the cancellation of DPAG’s „POST” trademark upon the motion of the Bundesverband internationaler Express- und Kurierdienste e.V. (BIEK - International Express and Courier Services Assocication) and other petitioners. DPAG then filed its appeal, which was the subject of an oral hearing before the Federal Patent Court on 15 November 2006.
From the beginning, BIEK supported the request for cancellation with the fact that the market penetration required for overcoming absolute protection obstacles was not present. Such can only be the case when the term is recognized and also used as a trademark in business in order to designate the services protected under the trademark. „In fact, DPAG has never used the designation „POST” at any time as a mark to designate any service which it provided,” said Dr. Søren Pietzcker of Heuking Kühn Lüer Wojtek in Hamburg, who represents BIEK in the cancellation proceedings.
The Federal Patent Court expressed significant actual and legal reservations about the trademark-related use of the designation „POST” for the relevant services.
Furthermore, the Federal Patent Court determined that the results of the public survey were not sufficient to provide evidence that the term „POST” had been established as a brand name for the registered services in the affected trade circles.
Thus, the designation „POST” lacks on secondary meaning in respect of the mail services filed for protection which would have been necessary for registration. The Federal Patent Court has confirmed this with the recent decision.