Tooltime term as trademark for software

If a trademark application is filed for a fictitious word consisting of a combination of understandable terms, such as TOOLTIME as a trademark for software and EDP, does the novelty of the fictitious word establish any distinctive character?
Not as such, according to German Federal Patent Court and to German case-law. However, what about the term TOOLTIME, in particular?

TOOLTIME as a trademark for software and EDP

A word creation with the term tool is often applied for as a trademark in the field of software and IT. This is what an applicant for a trademark tried to do with the term TOOLTIME as a trademark claiming protection for software, digital services such as contact management, data synchronisation and also for office services; accounting and controlling as well as for (mobile) telecommunication services.

However, the DPMA refused this trade mark registration on the grounds of lack of distinctive character. According to the DPMA, the word sequence TOOLTIME served as a narrowly descriptive factual reference to the goods and services claimed. The trade mark applicant appealed against this decision before the Federal Patent Court. The applicant argued that the term TOOLTIME was not lexically an independent term of the German or English language, but rather an original and unusual artificial word.

TOOLTIME – distinctive character?

The trademark applicant succeeded in his appeal; the BPatG disagreed with the DPMA's decision and completely overturned its negative decision. The term TOOLTIME was not devoid of distinctive character, the BPatG ruled (25 W (pat) 514/20).

The fact that the term TOOLTIME cannot be found in the dictionary is not relevant.

Indeed, the word "tool" was quite unambiguous and would be recognised by the relevant public as meaning "tool, device, aid, computer utility". The word "time" has the meaning of "time, deadline, clock time". Both terms are common vocabulary.

According to case law:
- Even if the term is not lexically recorded, this does not establish sufficient distinctiveness (see Ströbele/Hacker/Thiering, MarkenG, 13th ed. 2021).
- Spacing-less capitalisation as well as capitalisation within the word are to be seen as design elements customary in advertising and do not establish distinctiveness (cf. ECJ GRUR 2006, 229 marginal no. 71 - BioID).

However, the Federal Patent Court considered another aspect to be decisive.

Word combination TOOLTIME is clever

According to the BPatG, it remains unclear what is meant by "tool time", i.e. the combination of the two terms tool and time. It could be a particularly suitable point in time ("time") for the use of analogue or digital tools ("tool"), the period of time ("time") required by such a tool or computer utility ("tool") for certain processes, or its service life.

The artificial term TOOLTIME applied for as a trademark had therefore undergone an unusual change which was sufficiently far removed from an unambiguous objective indication.
The court added that the recognisability or a certain allusion to a certain meaning is inherent in speech marks. This fact did not preclude them from being perceived as an indication of origin.
Therefore, the term TOOLTIME cannot be denied any distinctive character, the BPatG ruled - in contrast to the examining division of the DPMA. The negative decision of the DPMA was overturned.

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