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EGC: The European Union Trademark NEUSCHWANSTEIN remains registered for the Free State of Bavaria

The German Association „Souvenir-Geschenke-Ehrenpreise“ (Souvenirs-Presents-Prizes) filed an invalidity action with the European Union Intellectual Property Office (EUIPO) against the European European Union Trademark NEUSCHWANSTEIN (no. 10144392) of the Free State of Bavaria. The trademark was filed and registered for perfumery, cutlery, jewellery, musical instruments, writing and letter paper, toys and other goods which can be subsumed under souvenirs in the year 2011. The intention was to obtain the cancellation of the trademark NEUSCHWANSTEIN based on the invalidity reasons

-  lack of distinctiveness according to art. 7 (1) b) EUTMR

-  geographical origin according to art. 7 (1) c) EUTMR

-  bad faith according to art. 52 (1) b) EUTMR

The invalidity action was thrown out by the General Court (EGC). The Federal Association Souvenir-Geschenke-Ehrenpreise can now only lodge an appeal with the superordinate European Court of Justice in order to overturn the decision.

Background:

The Free State of Bavaria registered the trademark NEUSCHWANSTEIN mainly in order to protect the name of the fairytale castle, which was built by King Ludwig II in the 19th century, from the use for trashy goods1. Consequently, the German Association Souvenir-Geschenke-Ehrenpreise filed a request for the declaration of invalidity which was rejected by the Invalidity Division of the EUIPO. The Division reasoned that the trademark does not contain any indication which could serve to designate the geographical origin or other features of the goods and services concerned. Furthermore, the trademark was distinctive and the application was not made in bad faith. The Board of Appeal of the EUIPO confirmed this decision which is why the German Association Souvenir-Geschenke-Ehrenpreise lodged an appeal with the EGC.



In detail: Statement of the EGC

1. No geographical indication of origin

With regard to the question of geographical origin, the EGC first of all determined that the relevant target field is formed by the overall public of the EU and that the goods and services are souvenirs which are on the one hand predominantly articles of ongoing consumption and on the other hand services which are provided daily.

The Court pointed out that according to the settled case law, a geographical designation is a geographical indication when it designates a location which is associated with the respective group of goods by the involved target field or when it can sensibly be expected that such an association can be made in future. Furthermore, the registration of a geographical indication as a trademark is excluded when geographical locations are designated which are already famous or known for the respective group of goods. The registration of geographical designations is, however, possible when the related target groups do not know this designation or at least do not know it as a designation of a geographical location and when it is rather unlikely that the target field could assume that the relevant goods come from this location.

The Court finally emphasized that the designation NEUSCHWANSTEIN literally means „der neue Stein des Schwans” (the new stone of the swan). Therefore, NEUSCHWANSTEIN is an invented and original name designating a building and thus does not allow the relevant target field to establish a connection with the goods and services.

The castle can be located geographically, however, it cannot be considered to be a geographical location as the castle is based in the community of Schwangau in the South of Germany. The trademark does not have the effect that souvenirs and services are understood as a geographical origin by the target field. The Court considers Neuschwanstein Castle to be a museum location which can be visited by tourists against an entrance fee and the main function of which is neither the production or marketing of souvenirs nor the provision of services but the preservation of the cultural heritage. As the Neuschwanstein Castle as such is no location for the production of goods or provision of services, the attacked trademark cannot offer an indication to the geographical origin of the registered goods and services

Therefore, the attacked mark can be registered.

2. No lack of distinctiveness

With regard to the distinctiveness, the Court explained that NEUSCHWANSTEIN is a fantasy name without any descriptive relation to the goods and services. As the name Neuschwanstein means “der neue Stein des Schwans” (the new stone of the swan), the connection of the trademark with the articles and services alone allows that they are differentiated from other goods and services which are sold or provided in other commercial or touristic cities. The Court determined furthermore that the trademark is neither an advertising means nor a slogan.

With regard to the 2012 decision by the Federal Court of Justice (Germany), upon which the national trademark NEUSCHWANSTEIN lost protection in Germany, the EGC distanced itself by reasoning that it is independent from every national system and that the registrability of a European Union Trademark must be assessed based on the pertinent regulations of the union, only.

3. No application in bad faith

As the term “bad faith” is not at all defined, limited or at least described in the legal provision of the Union, the Court of the European Union referred to a decision by the European Court of Justice (Lindt & Sprüngli, Lindt Goldhase, C-529/07) in order to interpret the term. According to that, all circumstances of the individual case at the time of filing the EU trademark must be taken into consideration for the assessment as to whether the applicant of a trademark acted in bad faith. In particular:

1.  if the applicant knows or should have known that in at least one member state, a third person uses the same or a similar sign for the same or similar goods or services, which could be confused with the filed sign

2.  the applicant’s intention to prevent this third person from the further use of such a sign

3.  the degree of legal protection the sign of the third person or the filed sign enjoys.

These factors are not conclusive and, according to the EGC, within the frame of the extensive assessment, entrepreneurial logic which would contain the application of the sign as a European Union Trademark, and the chronology of events regarding the application could also be considered (decision dated July 9, 2015 CAMOMILLA, T-100/13).

As the plaintiff could not present any proof which shows that the Free State of Bavaria knew that the plaintiff marketed the products, the above-mentioned circumstance under 1 was not fulfilled. The EGC pointed out that Neuschwanstein Castle is the property of the Free State of Bavaria which operates the Castle by selling souvenirs which should guarantee the relevant public a high-quality cultural visit and which serve the operation of the castle administration. That means the Free State of Bavaria pursues the target of maintaining and fostering the museum location. Therefore, the Free State of Bavaria does not use the fame of the castle in an unauthorized way for its own.

Therefore, it could not be proven that the Free State of Bavaria acted in bad faith.

-  -  -


It remains to be seen whether the European Court of Justice confirms the earlier decision. We will keep you updated.

July 13, 2016; Vanessa Bockhorni (PA)

EGC  T-167/15, NEUSCHWANSTEIN
1German online newspaper „Spiegel Online“ dated July 5, 2016 „Bayern siegt im Souvenir-Streit von Neuschwanstein“ (Bavaria wins in the souvenir dispute about Neuschwanstein)

© Bockhorni & Kollegen

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