Author: Birgit Clark (Berwin Leighton Paisner LLP)
German Federal Patent Court (Bundespatentgericht), case reference: 25 W (pat) 182/09, 4 February 2011
Journal of Intellectual Property Law & Practice (2011), doi: 10.1093/jiplp/jpr080, first published online: June 1, 2011
The German Federal Patent Court decided that the mark Neuschwanstein clearly and unambiguously referred to the famous castle of the same name and could not therefore be registered as a trade mark due to an inherent lack of distinctiveness regardless of the goods or services for which registration is sought.
Like the corresponding provisions of the Community Trade Mark Regulation, §8(2) No. 1 of the German Trade Mark Act (MarkenG) provides that a trade mark which is devoid of any distinctive character shall not be registered. §8(2) No. 2 MarkenG stipulates that trade marks ‘which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services’ will equally not qualify for registration. §50(1) MarkenG states that the registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of §8 MarkenG. §50(2) MarkenG further stipulates that, where a trade mark was registered in breach of §8(2) No. 1 or No. 2 MarkenG, the mark may only be declared invalid provided the ground for refusal still exists at the point of the invalidity decision and provided that the application for invalidity was filed within ten years from the date of registration of the mark.
The Bavarian Castle Department, a division of the Bavarian state government, was concerned about the quality of the souvenir trade connected to the castle and, in an attempt to regulate the souvenir industry in 2005, registered the word mark Neuschwanstein at the German Patent and Trade Mark Office (DPMA) for a broad specification of goods and services in classes 4, 5, 15, 24–27, 29, 30, 32–34, 36, 38, 39, 43 and 44. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE), a trade network of souvenir producers, wholesalers, and retailers objected to this registration and filed an invalidity application against the mark at the DPMA, inter alia, arguing that the trade mark was akin to ‘censorship’ of the Neuschwanstein souvenir trade.
The DPMA decided in the BSGE's favour and cancelled the mark, holding that the mark Neuschwanstein was a commonly used, non-distinctive term which was incapable of indicating the trade origin of the goods and services marketed under the sign, §8(2) No. 1 German Trade Marks Act (MarkenG). Neuschwanstein was not only a symbol for stylish ambience but was also part of Bavaria's cultural heritage. In view of the DPMA, consumers would therefore regard the mark Neuschwanstein as a mere advertising message and see it as a clear reference to the world famous castle.
Upon appeal by the Bavarian Castle Department, the 25th Senate of the German Federal Patent Court upheld the DPMA's decision, deciding that the term Neuschwanstein clearly and unambiguously referred to the castle of the same name and could consequently not be registered as a trade mark due to a lack of distinctiveness under §8(2) No. 1 MarkenG regardless of the goods or services for which registration was sought. The Court added that the mark was also descriptive of some of the goods and services covered under §8(2) No. 2 MarkenG.
In its decision of 4 February 2011, the Court first assessed descriptiveness of the mark under §8(2) No. 2 MarkenG. With regard to services such as ‘travel services; catering/hospitality services and accommodation services’, the Court found that the average consumer would interpret the mark Neuschwanstein as descriptive of the characteristics of the services rendered, their intended purpose as well as their geographical origin. The Court explained that it was the particular purpose that provision to exclude descriptive signs from trade mark protection since their monopolization was contrary to the justified interest of the general public to be able to use descriptive terms freely. The Court stressed that a potential effect on the freedom to compete was enough in this regard, provided it was reasonable to assume that the mark would be seen as descriptive by the normally informed and attentive consumer in the future. The Court found that the sign Neuschwanstein ‘unambiguously and exclusively’ referred to the castle of the same name. The Court considered that ‘travel services; catering services and accommodation services’ were services that targeted the average consumer, being typically rendered in connection with the visit of a tourist attraction because visitors had to travel to get to the castle and would often eat and/or stay in a nearby hotel. Consequently, the mark Neuschwanstein would be regarded as directly descriptive of such services that were rendered near or in connection with Neuschwanstein castle.
Turning to the question of distinctiveness, the Court held that Neuschwanstein also lacked the necessary distinctiveness under §8(2) No. 1 MarkenG to qualify for trade mark registration. The Court stressed that names of famous tourist attractions, such as Neuschwanstein, were not only non-distinctive for goods and services that are usually offered in the proximity or in the context of a tourist attraction but for all possible goods and services. Moreover, even marks that did not directly refer to the goods and services covered could nonetheless be non-distinctive provided there was a close descriptive connection between the mark and the actual product. Furthermore, the judges explained that commonly used words or idioms of the German language could also be non-distinctive in this sense and so be unsuitable to serve as indication of trade origin, even if they did not directly describe a product, provided that they were usually understood in this way; for example, due to use in the media or in advertisements. Like high-profile events, such as the Football World Cup, the names of famous buildings should equally not be monopolized.
The judges emphasized that Neuschwanstein was not only a major tourist attraction with over 1.3 million visitors per year but also a world famous landmark of particular cultural, political, and historical importance: such cultural sights, being part of the world cultural heritage, were common property belonging to the general public and, like the names of famous historical personalities, should also not be monopolized or commercialized by trade mark laws. Moreover, consumers would not interpret this name as a reference to a particular trade source or a specific undertaking but would always regard it as a reference to the castle. This assessment was not affected by the question of actual ownership of the building.
Applying these guidelines, the Court found Neuschwanstein was non-distinctive not only for goods and services that were typically rendered in close proximity of a tourist attractions (such as souvenirs, clothing, tobacco), products that were often additionally consumed by tourists (such as pharmaceutical goods, coffee, confectionery, and other goods covered by classes 29, 30, 32, and 33), not to mention supplemental services which were often required by tourists (such as financial services, currency exchange, and transport services) but also for those goods and services that that were not usually rendered in close context to a tourist sight (such as carpets, insurance services, real estate services).
All the same, the judges acknowledged that, in order not to overly limit the availability of names of famous buildings as trade marks, this approach had to be applied strictly and must be limited to buildings that were cultural goods of outstanding importance. Whether this was the case had to be specifically determined in each individual case. Comparing Neuschwanstein with other famous sights, such as the Colosseum in Rome, the Taj Mahal, and the Eiffel tower, the Court concluded that Neuschwanstein was not only a globally known symbol of the German age of romanticism and a significant part of Germany's national cultural heritage but also of political and architectural importance so that its name could not be monopolized by one proprietor.
The Court dismissed the Bavarian Castle Department's argument that the sign Neuschwanstein could be used as a trade mark by affixing it to labels or directly on actual products ‘in a self evident way of practical significance’ to render it distinctive in a trade mark sense. Referring to precedents by the German Federal Supreme Court in the DDR-Logo (I ZR 92/08 of 14 January 2010), SWISS ARMY (I ZB 35/98 of 21 September 2000), and TOOOR! (I ZB 115/08 of 24 June 2010) cases, the Court stressed that a mark that inherently lacked distinctiveness could not achieve distinctiveness by simply affixing it to the packaging of goods. Allowing otherwise, the Court explained, would not only bereave Article 8(2) No. 1 and No. 2 MarkenG of all meaning but would also be contrary to European trade mark law. The judges stressed that any assessment of the distinctiveness and/or descriptiveness of a mark always had to be conducted in the abstract, solely with regard to the meaning of a mark in light of the goods and services covered but unrelated to its actual use on the goods.
Finally, the judges made short shrift with the Bavarian Castle Department's contention that comparable trade marks for the castles ‘BURG ELTZ’, ‘NYMPHENBURG’, ‘LINDERHOF’, and ‘SANSSOUCI’, stating that each case had to be judged on its own merits and that earlier registrations were not binding but could only ever have persuasive importance. In particular, the decision as to whether a trade mark was registrable was not open to discretion.
Given that several aspects of this decision were of fundamental importance, the Federal Patent Court permitted a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof).
According to German media reports, the Bavarian Castle Department was very disappointed by the cancellation of its Neuschwanstein trade mark, stressing that it was not ‘after the souvenir and snow globe traders’ but merely wanted to protect the Neuschwanstein brand from ‘crude abuse’. In the view of the Bavarian Castle Department certain products, such as schnapps or lingerie, ‘were not reconcilable with the dignity of the castle’. While this view is understandable, the Bavarian Castle Department does have further legal options to prevent abuse of the sign Neuschwanstein under German law. This was also expressly mentioned by the Court which pointed out that alternative routes, such as claims under name right provisions under §12 German Civil Code, under the law of delict under §826 German Civil Code as well as unfair competition law claims under §§1, 3 German Unfair Competition Act were not barred by this judgment.
Following the Federal Patent Court's Neuschwanstein decision, names of culturally important buildings and personalites will be more difficult to protect as German trade marks. It should be emphasized in this context that the Court decided that Neuschwanstein was not distinctive enough for trade mark registration per se unrelated to the goods and services covered. How this decision will affect other existing German trade mark registrations for famous buildings, such as the ones cited by the claimant in the case, is unclear, in particular if the German Federal Supreme Court were to confirm this decision on appeal.