CJEU dismisses TM appeal over German castle name
The Court of Justice of the European Union (CJEU) has dismissed a trademark appeal made by a German souvenir federation over the name of a German castle.
In July 2011, the German state of Bavaria filed a trademark application at the European Union Intellectual Property Office (EUIPO) to register the word ‘Neuschwanstein’ in association with goods in 13 classes, including 3, 8 and 14.
Neuschwanstein is the name of a 19th century hilltop castle situated in the Bavarian municipality of Schwangau. The castle belongs to the state of Bavaria.
Goods covered by the applied-for classes include body and beauty care products, cutlery, jewellery, stationery, footwear and headgear.
In February 2012, the Bundesverband Souvenir (the Federal Association of Souvenir Gifts) sought to invalidate the mark in connection with all of the goods and services applied for.
According to Bundesverband, the mark violated provisions of Council Regulation No 207/2009. Under article 7, the association argued, the trademark could not be registered because it consists exclusively of signs or indications that may be used in trade to designate the geographical origin of the product, in this instance, Neuschwanstein Castle.
The association also claimed that the mark lacked any distinctive character and was made in bad faith.
The EUIPO’s Cancellation Division rejected the appeal in 2013, ruling that the contested mark was not composed of indications that could be used to designate the geographical origin of the goods.
As a result, the Cancellation Division said that the mark was distinctive for the goods. It also said that Bundesverband did not prove the mark had been made in bad faith.
Bundesverband appealed against the decision with the EUIPO in December 2013, but this was rejected by the office’s Fifth Board of Appeal.
In 2015, Bundesverband filed an action at the EU General Court to annul the decision. However, this was rejected and Bundesverband appealed against the decision at the CJEU.
According to Bundesverband, the relevant public would establish a link between the goods concerned and Neuschwanstein Castle.
Bundesverband also argued that the name Neuschwanstein is descriptive of the geographical origin of the goods offered by the mark “to the extent that the place of marketing of those goods and services should be considered as a connecting element” with the castle.
The CJEU cited a previous advocate general opinion in the case that said the “place of marketing an item” bearing the contested mark does not necessarily connect it with Neuschwanstein Castle.
As such, the CJEU said that just because the goods covered by the mark are offered in a specific place “cannot constitute a descriptive indication of the geographical origin of those goods”.
The CJEU cited the General Court when it said that Neuschwanstein Castle is a historical location, not a place where souvenirs are manufactured or marketed.
The court said that as a result, the contested mark cannot be indicative of the geographical origin of the goods it covers.
Bundesverband’s appeal was dismissed in its entirety, and the association was ordered to bear the costs.
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