TO BE OR NOT TO BE -- OKTOBERFEST
October 2020 is almost over and everything is different this year. Here in Munich, we have not been able to celebrate the WIESN as the “original” OKTOBERFEST is often called. It was cancelled due to the pandemic. Usually, visitors from all over the world come to our beautiful city each year during these two weeks in fall when OKTOBERFEST it taking place. However, while the public is cursing the pandemic and has been mourning, at least the City of Munich was able to enjoy a considerable legal and trademark victory.
On 19 September 2019, we published a blog article about a then recent decision of the German Patent and Trademark Office (GPTO) which had denied trademark registration in Germany for the term “Oktoberfest” as a pure word mark. This had not been the first time that the mark had been applied for and been denied trademark registration. Different registration proceedings had been and are pending with at least the GPTO and the EUIPO. Every now and then a decision is published and the public starts discussing widely whether or not the mark “Oktoberfest” has a distinctive character.
- Latest Decision of the EUIPO
Recently, on 26 August 2020 another such decision regarding an application for the word mark “Oktoberfest” was issued – this time in an appeal proceeding pending at the EUIPO. You can read the decision in appeal proceeding no. R 1840/2019-4 regarding European Union Trademark Application No. 15535008 “Oktoberfest” (word mark) here.
In its decision, the EUIPO’s Board of Appeal very profoundly analyzed the distinctive character of the word “Oktoberfest” for the goods and services applied for and found
- that it was not an invented word created by the applicant, but a word that is commonly used to describe a festival taking place in the month of October;
- that it was only descriptive for goods and services that are a festival or are an essential part of a festival.
Thus, it rejected the mark
- for all services applied for in class 41 (mainly entertainment, sporting and cultural activities, production of audio and video tapes), as they were limited to “all aforementioned services only with regard to public festivals”;
- for all services in class 43 that are related to the offering of food and beverages;
- for all food and beverages in classes 29, 30, 32 and 33 as they include goods that are very popular and an essential part of a festival like beer, wine, non-alcoholic drinks, sausages, pretzels, roasted and sugarcoated almonds and more.
However, the EUIPO allowed the mark
- for all services in class 43 that are not related to the offering of food and beverages, but to lodging only (for instance hotel services, rental of temporary accommodation, guesthouse services, hotel reservations and temporary accommodation reservations);
- for all services in classes 35 (mainly advertising and marketing services), 38 (telecommunication services), 39 (mainly travel and transport services) and 45 (mainly licensing services);
- for all other goods designated by the application – regardless of whether or not they are sold at festivals or can be merchandise related to festivals (for instance cosmetics, candles, electronic articles, cameras, mobile phones, CDs, jewelry, all kinds of printed matter, bags, kitchen ware, textiles, clothing, shoes, headgear, artificial and fresh flowers, games, playthings, fresh fruits and vegetables, tobacco articles).
The exact list of goods and services designated by European Union Trademark Application No. 15535008 “Oktoberfest” (word mark) can be found at the link given above.
- Implications of the Decision
Should the decision of the Board of Appeal not be appealed further by the applicant and should no opposition be raised, the term “Oktoberfest” will be registered with the EUIPO as a word mark and gain protection in all 27 member states of the European Union.
Does this mean that nobody else except the City of Munich can use the term “Oktoberfest” for goods and services of a festival as has been reported on some internet platforms? No, it does not. If you are organizing a festival in October, you can still call it “Oktoberfest” and food and beverages can be sold freely. However, be careful when selling goods and services for which the EUIPO allowed registration of the term “Oktoberfest” as a trademark. You can use the term if it is merely to describe a specific feature of a good/service, but we recommend not using it in a trademark sense as it cannot be ruled out that the City of Munich may one day enforce its trademark rights – should they eventually get registered.
For any questions regarding use of the mark “Oktoberfest”, you are welcome to contact us at
or by phone at +49 89 55879780.
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