Court of Justice of the European Union, Judgment of September 06, 2018 – C-488/16 P
The Court of Justice of the European Union (CJ) joins the General Court (GC) and the European Union Intellectual Property Office (EUIPO – nullity division) in their prior instance decisions and ruled that the European Union trademark “Neuschwanstein” can be registered as a trademark.
In 2012, the State of Bavaria registered the European Union trademark “Neuschwanstein” for a number of goods and services, among others, for music instruments, clothing and beverages. The federal association “Souvenir – Geschenke – Ehrenpreise e. V.” brought a nullity action before the EUIPO against the trademark due to absolute grounds, which was unsuccessful in all instances up to the CJ.
According to the CJ, the trademark “Neuschwanstein” does not provide any indication of geographical origin of the Neuschwanstein Castle. As the Neuschwanstein Castle itself is not a place where goods are produced or services are rendered, even if the goods were sold there as souvenirs. The mere remembrance that the term “Neuschwanstein” may create in the public’s mind does not constitute a significant feature of the goods and services. Neither does “Neuschwanstein” as a place of retail describe the geographic origin of the goods and services, as the place of retail is not qualified for describing the goods’ and services’ own characteristics, quality or features.
Further, in the CJ’s opinion, the trademark “Neuschwanstein” is of sufficient distinctive character. The connection of the trademark “Neuschwanstein” with the relevant goods and services allows the relevant public to differentiate the trademark from the goods and services that are sold or rendered in other commercial or touristic attractions.
The CJ’s decision is in its result opposite to the decision of the Federal Supreme Court of Germany, which decided in 2012 that the German trademark “Neuschwanstein” was not registrable for goods, such as music instruments, clothing and beverages (Federal Supreme Court decision of March 08, 2012 – I ZB 13/11 (Federal Patent Court)). Back then, the Federal Supreme Court denied the distinctiveness of the trademark “Neuschwanstein” for goods that are typically sold as souvenirs and travel goods, arguing that “Neuschwanstein” would be understood by the public as a tourist attraction and not as a product name.
Whether the State of Bavaria will be able to forbid manufacturers and retailers to use the term “Neuschwanstein” is questionable, because courts may consider that the trademark is not used “as a trademark”.