The mark had been registered in March 2007.  The invalidity application was filed in March 2008 and based on § 8 (2) Nos. 1 (non-distinctive), 2 (descriptive) und 10 (bad faith) German Trade Marks Act.  In May 2009 the German Patent and Trademark Office (DPMA) decided that it could not be determined that the mark had already been of non-distinctive at the point of registration with regard to entertainment services or that there had been a need to keep the mark free (“Freihaltungsbedürfnis”) for competitors.

On appeal, the German Federal Patent Court confirmed the DPMA’s decision and stated that in invalidity proceedings that are based on one or more of the absolute grounds of § 8 (2) German Trade Marks Act, the respective trade mark could only be invalidated where the relevant absolute ground had existed at the time of registration of the mark and was still existing at the time where the invalidity application was decided, § 50 (2) Sentence 1 German Trade Marks Act.

The Federal court took the view that at the time of registration consumers would have regarded the sign “Pornotube” simply as a combination of the element “Porno” – which is the same word in German as it is in English - and “tube” and would not have regarded the composite sign as being descriptive of entertainment services.  The element “Porno” would be seen as a mere reference to the content of the entertainment services.   Referring to dictionary evidence, the court further found that the second element “tube” could either be seen a reference to the German word “die Tube” - as in “die Zahnpastatube” (in English: a tube of toothpaste) -  or be recognized as the English word “tube” (which translates into the German words “die Röhre”) or be understood as a reference to an underground train.   The judges rejected the invalidity applicant’s argument that “tube” translated into the German words “Fernsehen” (television) or “Kanal” (channel) since this view could not be supported by lexical evidence.

The judges then discussed that the high profile of the video portal “YouTube” did not change this assessment and did not regard it as a proven fact that (German) consumers would have interpreted the term “tube” as a synonym for “internet portal” at the time of the registration of the mark in question.  A particular argument against this interpretation was the short period of time of less than six months between YouTube’s acquisition by Google in October 2006 and the registration of the “Pornotube” mark in 2007. 

Consequently, since “Pornotube” was not directly descriptive for entertainment services at the time of registration, the judges decided that its registration was not barred by a need to be keep the mark free (“Freihaltungsbedürfnis”) under § 8 (2) No. 2 German Trade Marks Act.  Equally, the applicant was not acting in bad faith in the sense of § 8 (2) No. 10 German Trade Marks Act at the point of application.

Bundespatentgericht, order of 19 October 2010, case reference 27 W (pat) 216/09 - “Pornotube”.  The decision can be retrieved from the court’s website by clicking here.