There has been an increase in trademark registration of digital or internet marks due to the rising trends of digital goods and services and other internet-related products. These made-up words are frequently registered as trademarks to identify specific product descriptions. In one of the most recent cases, the word “TOOLTIME” was given trademark registration for the software and IT category despite the Federal Patent Court’s determination that the mark was not descriptive.
According to the general rule, a mark cannot be descriptive to be registered as a trademark. But new clever word inventions are trademarked when they pertain to products involving digital or internet-related items. The way these terms are written suggests the products or services offered in that area. When the applicant applied to register the word “Tooltime” as a trademark for the description of digital software, such as contact management and data synchronization, as well as for office services, accounting and controlling, and (mobile) telecommunication services, this was an attempt to do so. The main argument centered on whether or not the software was described by the phrase “Tooltime.”
German Patent Office
Due to the mark’s descriptive nature and lack of distinctiveness, the German Patent Office rejected its registration. According to the patent office, the mark was overly descriptive of the products and services for which registration was requested. The claimed items, which included software and programs that deal with deadlines and dates, were meant to be employed for the company’s commercial activity’s time management. Additionally, in accordance with Section 8 (2) No. 2 of the Trade Mark Law, the term must be made free due to the descriptive nature of the mark.
Federal Patent Court
The applicant filed an appeal of this ruling with the Federal Patent Court, stating that “Tooltime” is a creative neologism rather than a stand-alone phrase in German or English. It is exceptional in the German or English grammar rules about “time, deadline, and clock time” due to the particular combination of the terms “tool” and “time.”
The trademark registration was successful thanks to the applicant’s appeal, which resulted in the Federal Patent Court annulling the Patent Office’s decision and ruling that the word “Tooltime” did not lack unique character. The court noted that because different experts define the word “tool” differently—as a “tool, gadget, help, or computer utility program”—the mark “Tooltime” lacks a clear mental concept. If only one of the definitions of the term accurately depicts the product or service, the term is deemed descriptive. This makes the definition of “Tooltime” wholly ambiguous. It could be an especially ideal period for using analog or digital tools, the amount of time these tools or computer programs need to complete a task, or even the end of their useful lives.
However, the court noted that a novel word-formation does not equate to a distinctive character under trademark law. If a new word formation like this one conveys meaning and embodies an understandable factual statement, as it does in this instance, the current mark has a completely different meaning. This term, “Tooltime,” is made up of various components that, when combined, cause a unique shift. The court further stated that speech marks have an intrinsic allusion to a particular meaning, even though this does not exclude their perception as designations. Therefore, denying the phrase “TOOLTIME” any special qualities was impossible. Additionally, there is no need to keep the mark free because it is not descriptive.