Neuschwanstein - Can the famous German castle be protected as an EU Trademark?

On 11 January 2018, Melchior Wathelet, the Advocate General of the Court of Justice of the European Union (CJEU), published his opinion about the dispute concerning the Neuschwanstein EU trademark. In his opinion, he recommended the CJEU to uphold the previous decision of the General Court. Wathelet states that the trademark is not descriptive for the goods and services covered and therefore there is no legal barrier for its registration.

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Source: Pixabay

Background of the case:

Neuschwanstein is a castle which was built from 1869 to 1886 during the reign of the King Ludwig II of Bavaria. Because of its appearance, the castle is often compared to a fairy tale castle which was for example also an inspiration for the castle in the original Disney version of the Sleeping and the Beauty. The castle is a major tourist attraction and therefore commercially very successful. The owner, the Bavarian State, decided to regulate the souvenir industry and filed an application for registration of a German national word trademark and later also a registration of an EU word trademark. The German national trademark was registered on 4 October 2005 under the number 30544198, the EU trademark then on 12 December 2011 under the number 10144392.

Against both of these applications for registration, the German Federal Association (Bundesverband Souvenir Geschenke Ehrenpreise e.V. - BSGE) filed invalidity applications. BSGE, a trademark network of souvenir producers, argued that the registration of the above mentioned trademarks would lead to censorship of the Neuschwanstein souvenir trade. Nevertheless, BSGE was only successful in cancelling the German national trademark. On the European level, the EU trademark so far was seen as complying with all requirements set forth in the Regulation 207/2009. Now in the last instance, the CJEU, is about to state its final view and render a decision on this case.  

Background of the German national trademark case:

Before taking a closer look on the current European case, here is a brief summary of the fate of the German national trademark.

The sign “Neuschwanstein” was registered as a German national trademark on 4 October 2005 under the number 30544198. On 14 January 2008, BSGE filed an application of invalidity according to Article 8 (2) No. 1 of German Trademark Act. The German Patent and Trademark Office (DPMA) agreed with the argumentation of the applicant and ordered cancellation of the trademark for lack of distinctive character. The trademark owner, the State of Bavaria, tried to reverse the verdict and filed a notice of appeal, which remained unsuccessful. Nevertheless, the dispute continued to the next instance – to German Federal Patent Court (BPatG). On 4 February 2011 the BPatG decided in compliance with the previous decisions about the invalidity of the concerned trademark. The trademark owner then filed an appeal to the final possible instance – to German Federal Court of Justice (BGH). The Court stated in his decision from 8 March 2012 that according to Article 8 (2) No. 1 of German Trademark Act souvenir goods do not possess distinctive character. The Court then explained that the sign “Neuschwanstein” was establishing a link to a sightseeing destination and so to be understood as a sign indicating geographical origin for the souvenir goods. As a result of above mentioned arguments, the German national trademark was declared to be invalid. For a better insight into this decision, read here.

Background of the European trademark case:

On 22 July 2011 the Bavarian State filed an application for registration of the sign “Neuschwanstein” as an EU word trademark, which was later, on 12 December 2011, registered under the number 10144392. On 10 February 2012 the BSGE filed an application of invalidity according to Article 7 (1) b) and c) of Regulation 207/2009 (EUTMR). On 21 October 2013 the application was rejected by the Cancellation Division of EUIPO. The Cancellation Division stated that the “EU trademark did not consist of indication which may serve to designate the geographical origin” and therefore the trademark did not breach the Article 7 (1) c) of EUTMR. It also did not breach requirements of Article 7 (1) b) EUTMR because the trademark is to be considered distinctive in respect of the goods and services in question.

The dispute continued to the next instance when the BSGE filed notice of appeal with EUIPO. Nevertheless, on 22 January 2015 the Board of Appeal (BoA) dismissed this appeal and confirmed the previous decision of the Cancellation Division. The BoA found the trademark not indicative of geographical origin and not devoid of the distinctive character, too. In addition, the BoA stated that the Bavarian State government was not in bad faith in view of the purpose of Article 52 (1) b) EUTMR.

The BSGE then brought an action for annulment of the BoA decision before the General Court. But, on 5 July 2016, the applicant´s pleas were again dismissed when the General Court did not find any arguments for declaring the trademark as invalid. In the opinion of the Court, the sign “Neuschwanstein” fulfilled all requirements under the EUTMR. The sign was seen as referring to the castle as a museum location and as the castle is not a place where the goods or services are manufacutred, it also cannot be seen as a reference to the geographical origin of the products. In addition, the trademark is a fantasy name and therefore it lacks a descriptive connection with the offered goods and services.      

Now, the CJEU, the final instance, will decide about the faith of this EU trademark. On 11 January 2018, the Advocate General Wathelet already published his opinion. As the previous instances, Wathelet pointed out that the trademark was not indicative of the geographical origin of the registered goods and services as those were merely marketed at the castle and furthermore could equally be marketed anywhere else. The Advocate General then also mentioned his definition of souvenir goods when describing them as “items that recall a person, place or event, they are items evoking emotions. And, human emotions cannot be covered by an EU trade mark”. Therefore they have to be understood as everyday goods. As a result, the Advocate General recommended the CJEU to uphold the General Court´s decision. For more information read here.

At the moment it is questionable, whether the Court will decide in compliance with the above outlined AG recommendation or will side with the point of view of the German Federal Court of Justice.