AG advises CJEU on German castle name clash

An advocate-general (AG) has advised the Court of Justice of the European Union (CJEU) to reject certain grounds of appeal in a dispute centring on a trademark related to a famous German castle.

In 2011, the German state of Bavaria (Bayern) applied for the trademark ‘Neuschwanstein’, which refers to the famous castle situated in the Bavarian municipality of Schwangau. The castle currently belongs to the state of Bavaria.

Soon after the mark was published, the Bundesverband Souvenir (the Federal Association Souvenir Gifts) sought a declaration that the mark was invalid. Founded in 1964, the Bundesverband is an association of manufacturers, wholesalers and retailers that represent the souvenir industry.

However, the Cancellation Division of the European Union Intellectual Property Office (EUIPO) rejected the request, finding that the mark didn’t consist of indications that designate geographical origin and was therefore valid.

The Cancellation Division went on to conclude that the mark was distinctive in respect of the goods and services it covered (classes 3, 8, 14 to 16, 18, 21, 25, 28, 30, 32 to 36, 38 and 44) and that Bundesverband had not proven that the trademark application had been made in bad faith.

Bundesverband appealed but was again shot down, this time by the EUIPO’s Fifth Board of Appeal.

In April 2015, Bundesverband filed an application to annul the board’s decision at the General Court, arguing that the mark was a descriptive indication of the goods and services in question, that the mark was devoid of distinctive character, and that the application was filed in bad faith.

Again, Bundesverband’s appeal was dismissed in its entirety by the General Court, so the souvenir federation appealed to the Court of Justice of the European Union (CJEU).

At a hearing held in November last year, the court asked the parties to concentrate their submissions on two parts of the appeal.

On the second part of the first ground of appeal, Bundesverband argued that the General Court had failed to consider the public interest and case law when it held that Neuschwanstein Castle was not the place producing the goods meaning that the mark could not indicate geographical origin.

AG Wathelet disagreed with this—holding that the General Court did not make any error of law in finding that the mark cannot be indicative of geographical origin.

“As Bundesverband acknowledges … it is quite possible that a souvenir item bearing the contested mark could be sold outside the vicinity of Neuschwanstein Castle. The very existence of that possibility supports the argument that the place of marketing of an item bearing the contested mark is not necessarily a tie connecting that article with Neuschwanstein Castle,” noted Wathelet.

In the first part of the second ground of appeal, Bundesverband alleged that the mark doesn’t have distinctive character, since merely affixing the mark to souvenirs is not sufficient to distinguish the goods from those sold in the vicinity of the castle.

The souvenir federation also argued that the General Court had provided insufficient grounds for its assertion that the contested mark has a distinctive character.

Wathelet agreed with the EUIPO and Bavaria that Bundesverband is unable to seek a re-assessment of the sign in an appeal, unless there has been a distortion of the facts or the evidence, which was not claimed in the present case.

The AG also disagreed with Bundesverband’s contention that the General Court had presented insufficient grounds.

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