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Thursday, 10 February 2011

German Federal Patent Court decides in Neuschwanstein castle trade mark dispute

News in the trade mark dispute surrounding the German castle Neuschwanstein (see the IPKat's report here) .


By way of reminder: the Bavarian Castle Department (which is part of the Bavarian state government)has the task of regulating the souvenir trade connected to the famous Bavarian fairy tale castle and its surrounding area and registered the word mark "Neuschwanstein" in 2005. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE) - which describes itself as "a network of producers, wholesalers, exporters, retailers and trade representatives from the souvenir, sports clubs, trophy and festive items (industry)" - objected to this. Arguing that the Bavarian Castle Department's trade mark registration was akin to "censorship" of the Neuschwanstein souvenir trade, the BSGE filed for an invalidity of this mark at the DPMA. The DPMA (see IPKat report here) decided in the BSGE's favour and invalidated the mark, according to media reports, the DPMA found that "Neuschwanstein" was an "often used", non-distinctive term" and thus not capable to indicate trade origin of the goods and services marketed under the sign.

The German Federal Patent Court has now decided this matter and issued a press release confirming that it has upheld the DPMA's decision to cancel the "Neuschwanstein" trade mark. In its press release of 8 February 2011 concerning "Neuschwanstein" (case reference 25 W (pat) 182/09 of 4 February 2011) the court has provided the following information which this Kat has translated and summarised below.

The sign "Neuschwanstein“had been registered as a trade mark in 2005 for a multitude of goods and services. On 20 November 2007 the German Patent and Trademark Office decided on an invalidity application concerning this mark holding that the mark should be invalidated because it fell foul of § 8 (2) No. 1 German Trademarks Act (MarkenG) since it had lacked distinctiveness at the time of registration and still lacked distinctiveness now.

Upon appeal, the 25th Senate of the German Federal Patent Court upheld this decision and, inter alia, decided that the term "Neuschwanstein" described the castle Neuschwanstein which was commissioned by Kind Ludwig II in the municipality of Schwangau in the state of Bavaria with the castle being a world famous landmark of high (cultural-)historical importance.

As regards to services such as "travel services; catering/hospitality services and accommodation services", the term "Neuschwanstein" does not qualify for trade mark registration since the term could be seen as describing the characteristics of the services in the sense of § 8 (2) No. 2 MarkenG, that is their intended purpose or the geographical origin of rendering the services.

Designations of well-known tourist attractions such as "Neuschwanstein" furthermore lack the necessary distinctiveness under § 8 (2) No. 1 MarkenG concerning such goods that are usually offered in the proximity of such tourist destinations as souvenir articles or to satisfy the demands of tourist with regard to foods, drinks or further articles. This equally applies to services that are usually rendered and offered in a close proximity or in the context of such tourist attractions.

The court stressed that the term "Neuschwanstein" not only described a tourist sight but also a building that is a significant part of the national cultural heritage. The judges further held that designations of cultural sights that are of high importance and/or that are part of the national or international world cultural heritage are common property and as such cannot be monopolised or commercialised through trade mark laws. The court added that these sights usually are not distinctive enough for trade mark registration in the sense of § 8 (2) No. 1 MarkenG, even without a factual reference to claimed goods and services

Given that several aspects of this decision have fundamental importance, the Federal Patent Court allowed a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof). On balance, this Kat believes that the court got it right but cannot help but thinking that the general idea of wanting to control the souvenir output surrounding the Neuschwanstein castle is not a bad one. How about having some kind of licensing committee when it comes to merchandise of such historical sights. Merpel, who likes her newly bought Neuschwanstein t-shirt (left), disagrees and thinks that this German Kat is nothing but a snob.... why not let the tourists decide what the want to spend their money on, rather than the Bavarian state?

Case reference : Bundespatentgericht, 25 W (pat) 182/09, delivered on 4 February 2011.

The court's press release can be found here.
The decision can already be retrieved in its entirety (German, PDF) by clicking here.

2 comments:

The TradeMarkovs' said...

TRADEMARKS AND GEOGRAPHICAL INDICATIONS ACT
Art. 11. Absolute Grounds for Refusal of Registration
(1) The following shall not be registered:
...
(xi) marks which consist of or include the name or a representation of historical and cultural monuments of the Republic of Bulgaria, as specified by the Ministry of Culture;...
(3) The provisions of items (viii), (ix) and (xi) of paragraph (1) shall not apply where the consent of the relevant competent authority has been obtained.

Copyright Attorney said...

Here is a similar story

The German federal association Bundesverband Souvenir-Geschenke-Ehrenpreise e.V. filed to have the mark revoked claiming that Neuschwanstein is a national monument which should not be monopolised in favour of one trade mark owner. The DPMA agreed and declared the trade mark “Neuschwanstein” invalid arguing that “Neuschwanstein” was an often used, non-distinctive term and thus not capable of indicating the origin of goods and services marketed under the sign. Through the appeal of the Castle Department the matter will now have to be decided by the German Federal Patent Court.

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