In Case T‑191/08 the European Court of Justice (ECJ) declined JOOP!’s motion to permit registration of a single exclamation mark placed inside a rectangle as a Community trademark.

The court ruled that this mark lacks distinctive character and therefore can not be registered as a trademark, pursuant to Art 7 Sec. 1b) of Regulation No 40/94. The single exclamation mark is a mere eye catcher, not suitable to convey the origin of goods.

The court also rejected the point that the mark had acquired a secondary meaning as a trademark pursuant to Art. 7 Sec. 3 of Regulation 40/94. JOOP! not only failed to deliver proof in time. The documents provided referred to the German market only and not – as it would have been necessary – to all markets in all member states.

Something often overlooked is the fact, that under German law an unregistered mark may be trademarked without registration enjoying comparable protection as a registered trademark. How so?

According to Sec. 4 no. 2 Trademark Act, trademark protection may also originate from the use of a mark in the course of business as far as a sign has acquired secondary meaning as a trade mark in the relevant public.

Based on Sec. 12 Trademark Act a registered trademark may even be deleted from the register, if there is a trademark originated from use if the registered trademark has a lower priority, i.e. the registered trademark is “younger”.

Of course, this does not mean registering trademarks in Germany is obsolete as the acquisition of a secondary meaning as a trademark doesn’t happen overnight, thus leaving a sign unprotected not to mention the burden of proof.