German Federal Supreme Court - „MICRO COTTON“ is a valid and not descriptive trademark

The plaintiff is owner of the trademark “MICRO COTTON” which essentially protects laundry and towels. The defendant sells towels with the indication “2 Microcotton Towels”. The District Court and the Higher Regional Court of Hamburg did not see this to be trademark infringing concluding that this is not the use as a trademark, but only a product-describing indication. “Microcotton” is an artificial neologism without a clear meaning. However, the term “Microcotton” had been used in Germany already prior to the assumed infringement as the objective description of textiles. The term would be associated with the well-known term “Microfiber” and would, at least in the context of cotton towels, be understood as describing them them as fluffy and voluminous. The Supreme Court did not accept this and said: “It cannot be denied that a term, which is not present in the pertinent language and which is a fantasy or made-up word having a creative content, has some distinctiveness, even if it has descriptive aspects.” Consequently, a mere descriptive understanding was denied. The Higher Regional Court of Hamburg was, moreover, of the opinion that the trademark “MICRO COTTON” would be invalid. The trademark was wrongly registered against the need to keep this mark free for the trade. The word combination could be used by the trade to point to the quality and other features. The term “Cotton” would be understood even by addressees not having English as a native language as “Baumwolle” (“Cotton”) and would be directly descriptive. The part “Micro” means “small” and would be directly descriptive either. The combination would be understood by the trade in the context of textiles as describing the quality in the sense of “smooth cotton fibers”. Even that was not accepted by the Supreme Court which stated: “Because the refusal of a trademark registration is only then justified if there is a complete lack of distinctiveness, a generous standard must be applied and even a very small distinctiveness is sufficient to overcome that hurdle.” Furthermore, the Supreme Court stated that “MICRO COTTON” as a made-up word does not have an immediate descriptive meaning and is protectable. This generous approach of the Supreme Court is not shared by the actual office practice. When applying for a comparable trademark, one has to face objections as well at German as at European level. To the decision: I ZR 101/15 “MICRO COTTON”.