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.
Webinar Announcement: 15 September 2021, 10 - 11 a.m. -- "Trademark Law advanced - Proof of genuine trademark use" (in German)
As a brand owner, the value of your business can depend significantly on one or more strong brands. On average across all industries, brand value accounts for approximately 50 % of a company's value. Maintaining and enforcing your trademark protection is therefore immensely important from a business perspective. However, both, maintainance and enforcement, depend on being able to prove, upon request, that you are using your trademark(s) in a right-preserving manner. In Webinar 7 of the LexDellmeier Webinar Series 2021 we will give you an overview with practical tips on "Trademark Law advanced - Proof of genuine trademark use". You are welcome to register for this 60-minute free webinar - which will be held in German - at Eventbrite under the following link: https://www.eventbrite.de/e/markenrecht-advanced-markenerhalt-durch-den-nachweis-ernsthafter-benutzung-tickets-147812239387?aff=ebdssbonlinesearch
As the EUIPO's "BIG MAC" decision of 11 January 2019 has shown, proving that a trademark has been used in a way that preserves its rights is not always easy. If you fail to do so, your trademark is either unenforceable or you risk losing your trademark rights to the extent it has not been genuinely used. The associated economic loss can be substantial in individual cases. Therefore, you should start preparing in good time to be able to provide evidence of use of your trademark if needed. Here, it helps to create an orderly and well-systematized documentation of possible evidence right from the start and to continuously supplement it. If it then actually becomes necessary to provide proof of use in the context of a lawsuit or proceedings before the responsible trademark office, well-structured documentation will significantly save time, cost and manpower. At the same time, it will enable third parties like courts and trademark offices to comprehensively evaluate your trademark use and is thus an essential step to preserving the enforceability of your trademark rights long-term.
As Part 7 of our 2021 Webinar Series, LexDellmeier will,
on 15 September 2021, from 10 to 11 a.m,
again present its successful webinar from last year on "Trademark Law advanced" with a focus on the rights-preserving use of trademarks and the proof of their genuine use. We will provide an overview of the legal basis of such use, highlight the consequences of insufficient trademark use and provide practical advice and checklists that you can use to systematize the compilation of use evidence for your own trademark(s).
If you are a trademark owner, you should not miss our webinar. However, we would also be happy to advise you at any other time in connection with genuine use of your trademark. Simply contact us by phone at +49 89 55 87 98 70, by e-mail at info@lexdellmeier.com or arrange a personal consultation. We look forward to hearing from you!
Webinarankündigung: 15. September 2021, 10.00 – 11.00 Uhr - „Markenrecht advanced – Markenerhalt durch den Nachweis ernsthafter Benutzung“
Als Markeninhaber kann der Wert Ihres Unternehmens erheblich von einer oder mehreren starken Marken abhängen. Im Durchschnitt aller Branchen macht der Markenwert ungefähr 50 % des Unternehmenswertes aus. Die Aufrechterhaltung und Durchsetzung Ihres Markenschutzes ist daher aus wirtschaftlicher Sicht immens wichtig. Beides ist aber davon abhängig, dass Sie auf Aufforderung nachweisen können, dass Sie Ihre Marke(n) rechtserhaltend benutzen. Eine erste Übersicht mit Praxistipps hierzu geben wir Ihnen unter dem Thema „Markenrecht advanced“ in unserem Webinar 7 der LexDellmeier Webinarreihe 2021. Für dieses 60-minütige, kostenlose Webinar können Sie sich bei Eventbrite unter folgendem Link anmelden: https://www.eventbrite.de/e/markenrecht-advanced-markenerhalt-durch-den-nachweis-ernsthafter-benutzung-tickets-147812239387?aff=ebdssbonlinesearch
Wie die „BIG MAC“ – Entscheidung des EUIPO vom 11. Januar 2019 gezeigt hat, ist der Nachweis der rechtserhaltenden Benutzung einer Marke nicht immer einfach zu erbringen. Gelingt es Ihnen nicht, ist Ihre Marke entweder nicht durchsetzbar oder es besteht die Gefahr, dass Sie Ihre Markenrechte im Umfang der Nichtbenutzung verlieren. Der damit verbundene wirtschaftliche Verlust kann im Einzelfall erheblich sein, so dass Sie unbedingt rechtzeitig anfangen sollten, sich auf die Erbringung von Nachweisen zur Benutzung Ihrer Marke vorzubereiten. Hier hilft es, von Anfang an eine geordnete und gut systematisierte Dokumentation von möglichen Benutzungsnachweisen anzulegen und diese kontinuierlich zu ergänzen. Wird es dann tatsächlich erforderlich, im Rahmen einer Klage oder eines Verfahrens vor dem zuständigen Markenamt entsprechende Benutzungsnachweise zu erbringen, spart eine gut strukturierte Dokumentation deutlich Zeit, Kosten und Manpower. Gleichzeitig ermöglicht sie eine – auch für Ämter und Gerichte – umfassend nachvollziehbare Darlegung der Markenbenutzung und ist damit ein wesentlicher Baustein für den dauerhaften Erhalt der Durchsetzbarkeit Ihrer Markenrechte.
Als Teil 7 unserer Webinarreihe 2021 wird LexDellmeier am
15. September 2021, von 10 bis 11 Uhr,
sein erfolgreiches Webinar aus dem vergangenen Jahr zum Thema „Markenrecht advanced“ mit Schwerpunkt auf der rechtserhaltenden Benutzung von Marken und dem Nachweis ihrer Benutzung wiederholen. Wir geben einen Überblick über die rechtlichen Grundlagen der rechtserhaltenden Benutzung, zeigen die Folgen nicht ausreichender Markenbenutzung auf und geben praktische Hinweise und Checklisten an die Hand, anhand derer Sie die Zusammenstellung von Benutzungshinweisen auch für Ihre Marke systematisieren können.
Wenn Sie Markeninhaber sind, sollten Sie unser Webinar auf keinen Fall verpassen. Gerne stehen wir Ihnen aber auch sonst jederzeit sehr gerne für eine Beratung im Zusammenhang mit der rechtserhaltenden Benutzung Ihrer Marke zur Verfügung. Kontaktieren Sie uns einfach per Telefon unter +49 89 55 87 98 70, per E-Mail unter info@lexdellmeier.com oder vereinbaren Sie einen persönlichen Beratungstermin. Wir freuen uns auf Sie!
LexDellmeier-Team on a Lama-Adventure
In August 2021 we had the chance to go on a Lama-Tour through the village Beuerberg (near Starnberger See). This was a special and extraordinary experience with lots of fun which will stay in our memories. We want to thank “Rio Lamas” who made this excursion possible. Due to the pandemic we regrettably had to delay our trip several times – but finally, it was able to take place. Besides taking a trip into the nature and getting to know the animals, we also got to know our client personally.
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- “Rio Lamas” and their owners
The farm “Rio Lamas” including the ten lamas is owned by Yvonne und Oliver Wahl.In the summer of 2012, a small black and white lama called Rio de Oro won Yvonne’s heart and was the initial ignition to have her own lamas. In May 2013, the stables and pastures were carefully selected, and, Yvonne and Oliver got their first lama, Saphir de Oro. Eventually, further young, namely Lamas Desperado, Evido, Lamorik and Saphir joined the flock. Recently, Yvonne and Oliver and their, “Rio Lamas” flock moved to a new premises outside of Munich, Germany.
- General Information about lamas and the lamas of “Rio Lamas”
Lamas are a species of camels and originate from the south American Anden. Their diet consists of herbaceous plants, grasses, shrubs, lichens. Lamas can grow to a height of 113 to 130 cm and can weigh 120 to 150 kg. The coat can be plain (white, brown, black), spotted or contain a different pattern. The animals are used to carry heavy weights, to gain wool or meat (only in south America). Lamas express their mood through their ears and tail. Under normal circumstances they only spit at their fellow lamas. The exception is when they feel harassed or threatened by a person. The flock of “Rio Lamas” currently consists of ten animals.
- Great adventures“Rio Lamas" offer
“Rio Lamas” offer several options and adventures in order to get to know the lamas. Via the program “Lamas hautnah” you are able to visit the adorable animals at their stable and pasture. There are also “Lama-Tours” where you can explore Beuerberg and the surrounding area with a lama at your side. The offered options differ in length and content and can be customized.
With “Lamaste-Lama meets Yoga” you get the chance to experience yoga while being surrounded with nature and lamas. Currently, there are three main programs available. You can choose from “Lamaste at the Lake”, “Morning Lamaste” and “Sunset Lamaste”.
If you really liked one of the lamas you met during one of the programs, you can also become the sponsor of a lama of your choice for a year. This program is called “Lama-Patenschaften”. You will receive many benefits like personal Lama-Post twice a year, a fiber-sample from your lama, a 10% discount percent for “Rio Lamas” products during the sponsorship and the chance to get to know your lamabetter.
Yvonne and Oliver Wahl also visit children and senior citizens with their lamas in several facilities in and around Beuerberg. They bring the participants much joy and we think this voluntary engagement is fantastic!
On the website “Rio Lamas” you will also find the “Lamaladen”, where you can look at the different products which are available at the farm store like plush lamas (Kuschel-Lamas) or the book “Mit drei Lamas nach Rom” by Thomas Mohr. It is also possible to buy a voucher as a gift. You can either pick it up at the farm or you can ask for the voucher to be sent to you via email.
If you caught interest in “Rio Lamas” or want to try out one of their fun programs, you can always take a look at their website. Yvonne and Oliver would enjoy meeting you and having you as their guests.
https://www.rio-lamas.com/
The European General Court (EGC) ruled for the first time on 7 July 2021 on the registration of a sound mark represented in an audio format and its requirements. The case concerned the question of whether the opening of a can with subsequent jingling is registrable as a sound mark. The EGC in essence denied registration – primarily due to lack of distinctiveness.
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I. Background of the case
On 6 June 2018 the applicant, Ardagh Metal Beverage Holdings GmbH & Co. KG, applied for an EU trademark consisting of a sound. The sound is reminiscent of the pop of opening a can, followed by approximately one second of no sound and a prickle of approximately nine seconds. When it filed its application, the applicant submitted an audio file.
By decision of 8 January 2019, the examiner rejected the application for lack of distinctiveness of the mark applied for under Article 7 (1) (b) of Regulation 2017/1001, to which the applicant appealed. At the centre of the EGC's decision is the question of whether the sound described is distinctive or not.
II. The Decision of the EGC
At the outset, the EGC clarified that the criteria for assessing the distinctiveness of a sound mark are identical to those for the other categories of marks, as Article 7(1) of Regulation 2017/1001 does not distinguish between different categories of marks.
It is necessary that the sound mark has a certain resonance, based on which the addressed consumer can recognize it and perceive it as a trademark - and not merely as a functional component or as an indicator without intrinsic characteristics. The consumer of the goods or services in question must be able, through the mere perception of the mark, to establish the link with that commercial origin - without combining it with other elements, such as word or figurative elements, or even another mark.
The Board of Appeal (BoA) had denied the required function of origin to the sound mark at issue and justified this with the "extraordinary simplicity" and "everydayness" of the sequence of sounds. However, the EGC pointed out that this reasoning of the BoA is erroneous, since it based its conclusion on the case law relating to 3D marks consisting of the appearance of the product itself or its packaging. This case law – according to the EGC – cannot be directly applied to sound marks.
That error of law in the statement of reasons is not such as to render the BoA's decision as a whole wrong. It is clear from an overall reading of the grounds of the decision that the BoA did not rely exclusively on the case-law developed in relation to 3D marks. As a result, BoA and EGC come to the same conclusion that this sound mark, applied for in this specific case, does not exhibit such nuances in relation to the classical sounds that beverages produce when opened. The sound is a purely functional element, which is not sufficient to provide evidence of the required distinctiveness. Thus, the sound mark did not provide any indication of commercial origin.
III. Conclusion
Particularly in increasingly competitive sectors there is a need to attract the attention of consumers in various ways. Therefore, the establishment of different marks with recognition value, be it visual or auditory, is a logical development and therefore we can expect further decisions on still rather rare sound trademarks in the future.
To read the full decision in German, please click here.
On 6 July 2021, the “Bundesverband mittelständische Wirtschaft e.V.” (Federal Association of medium-sized businesses) hosted a webinar on the topic "AI and Intellectual Property". At this Event, sponsored by ANAQUA, the speakers looked at the topic from different angles and provided very interesting insights into the latest developments in the field of Artificial Intelligence (AI) and their impact on IP processes.
I. Alexandra Dellmeier introduced the topic by providing an all-around view of the European Union's new draft regulation published on 21 April 2021. Click here for the slides in English.
II. Jonas Delkurt is an experienced IP Software Specialist and works for ANAQUA as a Solution Consultant in London. He answered questions about what artificial intelligence is exactly, where it can be used and the aspects are important with respect to artificial intelligence.
III. Dr. Andreas Gallasch is CEO of Software Factory. He spoke on the topic of "AI used in Industrial Production". In particular, he addressed the goals pursued using AI in production and the possible applications.
IV. Dr. Bernd Haberlander is a (European) Patent Attorney at the law firm Hinkelmann. His contribution to the webinar focused on the question of whether AI is reliable.
To watch the entire webinar in German, please click here.
LexDellmeier in the past eight months has developed and now launched "BenBot" – version 1.0 – a chatbot who assists in answering questions relating to EU trademark applications. Special features include an identical search, automatic classification of goods and services and overall costs. Find BenBot on the landing page of the website www.lexdellmeier.com.
Want to know more about BenBot. Here are some Q's and A's in a nutshell:
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Q: What can BenBot assist with?
A: BenBot helps answer basic questions relating to EU trademarks. You can enter your trademark, BenBot asks what products or services you wish to protect and automatically classifies them. And, BenBot can do an identical search for word marks. In addition, the costs relating to an EU trademark application are calculated.
Q: Does the use of BenBot cost anything?
A: No. BenBot is free of cost and available 24/7. Therefore, the chatbot is great for start-ups or international clients who are in different time zones and want to get a quick and easy overview about EU trademark applications.
Q: Does BenBot file an EU application?
A: No. BenBot helps answer the user's questions, records the user's answers and informs the LexDellmeier trademark team about the user's inquiry automatically through BenBot. What LexDellmeier has created is the version 1.0 of a chatbot for EU trademarks. It was the aim to create a simple tool to help answer questions relating to the EU trademark application process. The chatbot user does not need to have any prior knowledge about EU trademarks. He just needs to answer the questions BenBot asks - quick and simple in approx. 8 - 10 minutes.
Q: What happens after the user has submitted everything through BenBot?
A: The LexDellmeier team reverts to the user - usually within 24 - 48 h in order to maybe discuss some further aspects of the application that BenBot himself cannot assess yet. For example: It is possible to upload word marks, word/device marks and pure device marks. However, it could be that the potential trademark includes elements which in general cannot be protected as a trademark according to applicable EU case law. BenBot version 1.0 cannot legally (yet) assess the application. For this reason, the LexDellmeier trademark team reviews the given information and contacts the user in order to further assist or discuss the EU trademark application in further detail.
Q: Where does the name "BenBot" come from?
A: "Ben" is the name of LexDellmeier’s office dog - a funny and always in a good mood rough-haired dachshund, who everyone at the office loves.
PS: Of course, “BenBot” is protected as a trademark.
Q: Who had the idea for BenBot and who developed the chatbot?
A: The idea came from Alexandra (Dellmeier). Project leader was LexDellmeier's fantastic summer law intern in 2020 and ELSA law student, Oliwia Puto. Oliwia, with some guidance from Alexandra, developed the whole project plan internally and externally for the (software) developer, set up the time plan, wrote the texts for the chatbot, wrote the terms and conditions and also did the final testing. For more information on Oliwia's tasks during her 3-month internship at LexDellmeier – please see her blog post at: https://www.lexdellmeier.com/de/node/1604Feel free to try out BenBot, recommend him to #startups and please do give us feedback. It is our aim to continue to develop him over the next years to become even more sophisticated, smarter and fun.
After almost 10 years, the dispute over the PIRELLI figurative trademark comes to an end with a ruling by the European Court of Justice (ECJ) on 3 June 2021. The European General Court (EGC) previously ruled that the sign is protectable as a trademark because it does not depict a technical effect of the protected product. This ruling has now been confirmed by the ECJ.
(EUTM No. 002319176; Owner: PIRELLI TYRE S.p.A.)
I. Background of the case
On 23 July 2001, PIRELLI TYRE S.p.A., filed an application with the European Union Intellectual Property Office (EUIPO) for an EU trademark for the figurative sign shown above. This sign was subsequently registered as a Community trademark (now called European Trademark) on 18 October 2002.
On 27 September 2012, The Yokohama Rubber Co. Ltd. filed an application with the EUIPO for a declaration of invalidity of the disputed mark for the goods "tires, solid tires, semi-pneumatic tires and pneumatic tires for vehicle wheels of all kinds” in Class 12. As a result, the Cancellation Division of the EUIPO declared those goods of the disputed mark and, in addition, the goods "rims and covers for vehicle wheels of all kinds", to be invalid.
On appeal by PIRELLI TYRE S.p.A., the Board of Appeal (BoA) partially annulled the decision, but, upheld the invalidity of the disputed mark for "tires, solid, semi-pneumatic and pneumatic tires for vehicle wheels of all kinds”. The proceedings ended up before the EGC, since PIRELLI TYRE S.p.A. took the legal view that a ground for invalidity according to Art. 7 (1) (e) of Regulation (EC) 40/94 did not exist. The EGC shared this opinion and annulled the declaration of nullity.
On 03 June 2021, the ECJ ruled on the appeals under Art. 256 (1) TFEU and Art. 58 (1) of the Statute of the Court of Justice of the European Union of EUIPO and Yokohama Rubber Co. Ltd. in joint proceedings.
II. Decision of the ECJ
First, Yokohama Rubber Co Ltd raised the complaint of adulteration. However, this was rejected by the ECJ as inadmissible, since it was not specified exactly which errors of assessment the EGC had made in its view that led to a distortion of the facts.
Further, the ECJ points out that the appeal is limited to points of law. Thus, the objections raised by the complainants regarding the evaluation of evidence and the assessment of facts in the challenged judgment of the EGC were also rejected as inadmissible, since they do not concern points of law. The ECJ also rejected the allegation that the GCJ's judgment was inconsistent by referring to the overall consideration of the judgment.
It was also criticized that the EGC assumed that the EUIPO had to add further information for the assessment of a technical function of the representation and thus unlawfully added elements to the disputed mark. It was considered that the sign represents a groove and thus a component of the tread, which in turn is only a component of a tire. Here, the ECJ clarifies that the court judicially assumed that the EUIPO could include further material in its assessment if it did not consider the disputed mark as "representing a tire tread".
Furthermore, the decision raised the question of how the absolute ground for refusal in Art. 7 (1) (e) (ii) of Regulation No 40/94 must be interpreted. The EGC assumed that only signs that constitute an essential part of the goods in quantitative and qualitative terms can achieve a technical effect. However, according to the ECJ, the review of this assessment could be left undecided, since already no evidence was provided that a single groove in the disputed form is at all suitable to achieve a technical effect.
Lastly, the ECJ ruled that there was no error of law in finding that the registration of the disputed mark was not capable of preventing Pirelli's competitors from marketing tires having a shape identical or like the shape of that mark when that shape is combined with other elements.
III. Conclusion
This presented decision refers to Regulation (EC) 40/94, which has been replaced by Regulation (EU) 2017/1001. However, given the wording of the new regulation, this case law may continue to be relevant. But this remains to be seen.
For more information read the full decision here: https://curia.europa.eu/juris/document/document.jsf?text=&docid=242042&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=14087443
I. General aspects relating to 3D/shape marks
The 3D trademark is a figurative trademark in which the three-dimensional design or shape of a trademark is protected. This can be the packaging or shape of a product.
As with other forms of trademarks, it is particularly important that the mark must be distinctive. No prerequisite for 3D trademark protection is – contrary to design law – the novelty and uniqueness of the aesthetic design of a consumer product. If the respective requirements are met, a product design can be protected as a design and at the same time as a three-dimensional trademark, since the respective protection fulfils different functions.
EUTM No. 011711496 owned by Fenix Outdoor AB
Last year in 2020, various European trademark offices agreed on a common practice regarding 3D/shape marks in order to strive for further harmonization of EU decision making.
- If a non-distinctive shape is represented in a specific color, it is necessary for decisiveness that the specific color combination is unusual for the product and characterizes the overall impression.
- If the shape is supplemented by a distinctive word or figurative element, distinctive character can be assumed if this characterizes the overall impression. In the case of very well-known trademarks, even small word and figurative elements are to be regarded as distinctive.
This requirement was also the subject of a new decision of the EUIPO Board of Appeal (BoA) on 21 May 2021, with regard to a backpack shape as a 3D trademark (Case R 1485/2020-1).
II. Background of the case
In 2013, Fenix Outdoor AB applied for the 3D trademark shown above in class 18 for the goods backpacks, which was published and registered.
On 25 January 2019, Gor Factory, S.A. filed an application for a declaration of invalidity and cancellation of the registered trademark for all goods. This was based on Article 59 (1) (a) EUTMR, as they see a violation of Article 7 (1) (a) and (b) EUTMR.
This request was rejected by the Cancellation Division in its decision dated 27 May 2020, against which the applicant filed an appeal. The BoA of the EUIPO decided on this matter on 21 May 2021.
III. Decision of the Board of Appeal of the EUIPO
The appeal is admissible, but unfounded. The Board could not identify a violation of Article 7 (1) (b) EUTMR. The examination of distinctiveness is carried out in various stages. First, it is determined whether the shape as such is devoid of distinctive character, only then other elements are identified and thereupon the distinctive character accruing to them is assessed. Second, the assessment is made in the context of the overall view, which is particularly important in the case of three-dimensional marks consisting of the appearance of the product itself.
- As to the first point, the Board held that the sign consists of the shape of a backpack, which is common and usual overall, so that the shape alone does not give rise to any distinctive character.
- At the next stage of the assessment, the fox logo was included as a figurative element, which was considered distinctive, since this animal has no connection with the protected goods.
Due to the fact that the figurative element (the fox logo) was included in the shape mark, it was found that it is in a central position within the shape and due to its size, it can attract the attention of the consumer. In particular, buyers of backpacks would know that the distinctive sign of those goods is usually on the upper front of the bag, so that attention is drawn to the fox logo and ensures that the mark as a whole is actually perceived as an indication of origin.
The Board also did not find a violation of Article 7 (1) (a) EUTMR. In particular, the applicant has not provided any evidence to the contrary that the requirements of Article 4 EUTMR are not met. Since the mark has already been found to be distinctive and therefore registered, it must necessarily be capable of providing an indication of origin.
It remains to be seen if the BoA decision will be appealed to the European General Court or if it will become final.
When hearing about the „BavariaWeed“ decision of the European General Court (Decision of 12 May 2021, T-178/20 – currently only available in German and French) for the first time, one‘s initial reaction might be to say „I thought we were over that.“ However, when you take a closer look at the reasoning and take into account that the mark had been filed with the European Union Intellectual Property Office (EUIPO), asking for trademark protection in all – back then 28 – EU Member States, it becomes obvious that it is not that easy… And, even if the EUIPO does not want to register the mark – guess what?! The German Patent and Trademark Office did!
(EUTM Application No. 017997323)
I. Background
In 2018, a recently established distributor of Cannabis products to pharmacies across Germany with a seat in a small town close to Munich filed EU Trademark Application No. 017997323 for the word/device mark „BavariaWeed“ as pictured above. The application designates different services in classes 35, 39, 42 and 44 – all relating to the distribution and promotion of cannabis for medical use.
The EUIPO including the Board of Appeal rejected the application based on Article 7(1)(f) EUTMR for being contrary to public policy.
II. Recent Decision of the European General Court
On 12 May 2021, upon further appeal, the European General Court confirmed the refusal relying on the following reasons (Case T-178/20 – BavariaWeed):
- The relevant, English-speaking public will easily understand the word part "weed" as a slang term referring to "marijuana". Thus, the trademark application would endorse the use of this drug as a lifestyle product for leisure purposes which is detrimental to the public order in individual EU Member States.
- Although legalizing certain uses of cannabis is being discussed on EU-level, the consumption of marijuana is still illegal in some EU Member States, which is sufficient for a refusal under Article 7(1)(f) EUTMR.
- The assessment of a ground for refusal under Article 7(1)(f) EUTMR cannot be limited to the public to which the designated services are directly addressed, in this case doctors, nurses and patients. Instead, it must be considered that the sign applied for will also be seen by other persons who, without being concerned by those services, will encounter the sign incidentally in their day-to-day lives. These persons might not be aware of the official rules on cannabis products for medical use and might perceive the figurative mark „BavariaWeed“ as support for narcotics. Thus, the threshold for refusing a trademark application under Article 7(1)(f) EUTMR should not be set too low.
III. Conclusion
The perception of a trademark application as being contrary to public policy is not the same in all EU Member States, inter alia for linguistic, historic, social and cultural reasons. Therefore, while use of cannabis for medical purposes might have become more liberal over the past years, there are still different standards in the various EU Member States that need to be taken into account during the trademark registration process.
Interestingly, on 30 April 2021, the applicant had also filed German Trademark Application No. 30 2019 214 565 for the same figurative „BavariaWeed“ mark with the German Patent and Trademark Office basically covering the same services not restricted to „cannabis“. This application got registered within less than a month… As you can see, not all trademark related issues have been harmonized throughout the EU member states. Therefore, it is still important to strategize trademark applications and have knowledge of case law – in the EU and around the world.
Should you like to discuss the decision of the European General Court regarding the refusal of the „BavariaWeed“ mark, you are welcome to comment on this article or contact us by email to info@lexdellmeier.com or by phone: +49 89 55 87 98 70.