The case: A caterer wanted to protect a catchy brand for his barbecue products, beer and catering business. He came up with the following brand and a registered trademark symbol ®, which he thought was sufficiently unusual:

The Federal Supreme Court [BGH], however, found that consumers see ‘grill meister’ [‘grill master’] only as a general promise of quality. ‘grill meister’ advertises ‘masterly grill products’ which are ‘particularly suitable for grilling’. And, in relation to catering, ‘grill meister’ advertises ‘a particularly good cook on the barbecue’. Thus, ‘grill meister’ only describes in a laudatory manner the barbecue products and catering, which cannot be therefore protected.

The brand design did not assist the caterer in this dilemma. The illustration of the sausage, the spelling and the red background field were very simple. Such designs are common and the consumer does not infer from them anything to distinguish the caterer’s goods and services from those of other companies. Such designs cannot therefore render a descriptive mark protectable.

However, the mark did not say anything about the protection applied for in respect of beer. It did not describe the beer and could in theory therefore have been registered for this product.

Yet the caterer had included the registered trademark symbol ® in his trademark. A ® means that there is a registered trademark of exactly this content. Obviously, the caterer had expected the symbol to give him an advantage over customers and competitors. It was foolish to align the registration symbol directly next to the words ‘grill master’ as these were not eligible for protection. The trademark thus gave the false impression that the caterer had a right to ‘grill master’. Because the trademark contained a false advertising slogan and misled the public, it could not even be registered for beer, BGH of 17 October 2013, I ZB 11/13.

Learnings: There is in essence nothing wrong with developing catchy brands. However, one should be very careful that they do not contain any descriptive statement about the goods and services. Also, the registration symbol ® means that there is a trademark with exactly this content. If it is included in the trademark and this statement is not true, the whole trademark is unprotected on the basis of deception.