Descriptive Character and Geographical Origin: Bad News for the Souvenir Industry

If you are one of those intellectual property lawyers that likes to tell brand stories while travelling, this post is for you.

Last September, the European Court of Justice (ECJ) dismissed the appeal of the German Souvenir Federation (Bundesverband Souvenir), which had filed an invalidity action based on the descriptive character of the term “Neuschwanstein” (the name of a beautiful castle located in southwest Bavaria, Germany). The appellant argued that the mark may be used in trade to designate the geographical origin of the goods and services concerned (handbags, clothing, soft drinks, jewelry, etc.).

As we all know, for a trade mark to be registrable under EU law, it shall be capable of distinguishing the goods and services of one undertaking from another, and according to Article 7 (1) (c) of the EU Trade Mark Regulation (EUTMR), it shall not consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, intended purpose, value, geographic origin, the time of the production of goods or rendering of services, or other characteristics of goods or services.

In order for a trade mark to be refused or invalidated based on its descriptive character, the mark shall be assessed having regard to the goods and services claimed in the trade mark application as well as the perception of the relevant public.

In this case, Neuschwanstein Castle is first and foremost a museum location famous for its unusual architecture. However, it is not known for the goods and services for which the trade mark is registered, and it is unlikely that it will be known for these types of goods and services in the future. In addition, the ECJ stated that the souvenir function ascribed to a product it is not an objective characteristic inherent to the nature of the product itself as this function is determined by the free will of the buyer.

As a result, the ECJ held that the mark is not indicative of the geographical origin of the goods concerned and as such, it is valid under Article 7(1)(c) of the EUTMR.

In our opinion, this case provides further clarification with regard to the differences between trade marks and indications of geographic origin without going too far from the prior jurisprudence.

You may remember that in the earlier case of Windsurfing Chiemsee the ECJ held that a product does not need to be manufactured in a geographical location in order to be associated with it. However, the fact that certain goods are offered in a particular place is not sufficient to invalidate a trade mark registration based on the ground of descriptiveness.

If the ECJ did not (completely) change its orientation over the years, this judgment appears to be in contrast with the German Federal Court of Justice’s decision, which previously held that the national mark “Neuschwanstein” lacks of distinctiveness according to German law and it should therefore be deemed as partially invalid for those goods that the public is likely to associate with the Neuschwanstein castle.

This confirms, once again, the importance of considering both national and EU-wide trade mark filings when advising our clients on trade mark protection in Europe.

This judgment also has practical considerations for clients operating in the tourism industry, who now seem to be able to protect certain names of locations as a trade mark and possibly prevent other companies operating in the souvenir industry from using the same names, which, at the end of the day, was the Bavarian Castle Department’s intention when it applied for registration of the term “Neuschwanstein”.

By Serena Totino and Star Tong

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