Every year again - What's new from Oktoberfest

The 187th Oktoberfest should have taken place as usual on the Theresienwiese in Munich in 2021. But also this year the Corona pandemic ensures that unfortunately nothing will come of it. At the press conference on May 3, 2021, it was explained that a unanimous decision had been taken to recommend that the major public festivals in Bavaria, including the Oktoberfest, should not take place. However, on this occasion we took a look at the developments and news about the word mark "Oktoberfest".

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I. Historical Outline

Since the City of Munich has applied for a word mark for "Oktoberfest" as such it is disputed whether it has distinctive character or not. In September 2019, the applicant withdrew the application for a trademark registration “Oktoberfest” (No. 30 2018 008 442.3), after the German Patent and Trademark Office (GPTO) had found that the trademark lacks distinctive character.

On 26 August 2020 another decision regarding an application for the European Union Trademark (EUTM) “Oktoberfest” was issued - this time in appeal proceedings pending at the European Union Intellectual Property Office (EUIPO). The EUIPO Board of Appeal (BoA) very profoundly analysed the distinctive character of the word “Oktoberfest” 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.

The BoA refused registration in some classes. However, it allowed registration for all services in class 43 that do not relate to offering food and drink, but only to accommodation, for all services in classes 35 (tourism advertising is particularly important here) and 45, and for all other goods designated in the application - regardless of whether they are sold at festivals, or whether they are goods related to festivals (decision of the EUIPO BoA No. R 1840/2019-4).

For more information about the proceedings of the BoA check out the blogpost from last year: https://lexdellmeier.com/de/blog/be-or-not-be-oktoberfest

II. New developments

On 7 October 2020 the City of Munich took advantage of the EUIPO BoA’s indication and applied for the word marks "Münchner Oktoberfest" (No. EU 018317924) and "Oktoberfest München" (No. EU 018317926). These two marks were registered and published on 31 May 2021.

On 30 April 2021, 5 years after the City of Munich applied for registration of the EUTM "Oktoberfest", the trademark (EUTM No. 015535008) was published. The subsequent opposition period expired on 30 July 2021. After no oppositions were received, it is now official – “Oktoberfest” is an EU Trademark Registration.

On 25 June 2021, the Munich Regional Court I issued a preliminary injunction against two organizers of the Oktoberfest in Dubai (for the German version click here.) It prohibited advertising with the phrase "Oktoberfest goes Dubai" as well as the accompanying illustration, as it saw in this both a misleading of consumers and an unfair exploitation of reputation.