SONN Patentanwälte – IP Attorneys

Magic Mountain distinctive for the organization of outdoor events

In a trademark dispute concerning the use of MAGIC MOUNTAIN for tourism services and, in particular, for the arranging and the organization of outdoor events and activity holidays, the Supreme Court now had a final word – at least as far as the injunction proceedings are concerned. The defendant had lodged an extraordinary appeal to the Supreme Court, appealing against a decision from the Vienna Higher Regional Court, which had confirmed the interim injunction issued against the defendant by the first instance Commercial Court of Vienna. By order of 20. 4. 2016 (4Ob51/16b), the Supreme Court rejected the appeal based on lack of significant legal issues. In a trademark composed of word and image, the overall impression is generally dominated by the word element because the public is used to focus on the word element – as long as it is distinctive – and will usually particularly memorize the word component of the trademark. The Supreme Court found that the distinction between descriptive character and mere allusion to certain characteristics of the word component MAGIC MOUNTAINS – which distinction is relevant to determine the degree of distinctiveness and the strength of the earlier sign in the fight against imitators – was, in any event, no significant legal question. The Supreme Court furthermore confirmed that the evaluation by the appeal court was acceptable. According to the Higher Regional Court, the phrase MAGIC MOUNTAINS was not descriptive and therefore distinctive for the services in classes 39 and 42. The Supreme Court concluded that the analysis of the meaning of MAGIC MOUNTAINS requires some interpretation effort. Having a certain originality and concision as well as being easily memorable, the word sequence MAGIC MOUNTAINS was capable of identifying the commercial origin of the goods and services specified, and to fulfill its function as a business identifier. The defendant therefore remained under the injunction to refrain from using a sign - albeit with a different image - with the phrase MAGIC MOUNTAIN for tourist services.