SONN Patentanwälte – IP Attorneys

Bavaria keeps Neuschwanstein

In a decision published 5 July 2016 (T-167/15), the General Court of the European Union (GC) confirmed that the sign "Neuschwanstein" was fully protectable as a European Union trade mark. In 2011, the Free State of Bavaria had successfully applied to register the word mark „Neuschwanstein“ as an EU trade mark for various goods and services, among them souvenirs. The following year, the Bundesverband Souvenir-Geschenke-Ehrenpreise e.V. filed a request for a declaration of invalidity against the mark, substantiating its request by claiming that the mark lacked the required distinctiveness. The Bundesverband also claimed that the mark was merely descriptive, as "Neuschwanstein" was the name of a geographical location and therefore only designated the geographical origin of the designated products. In its reasoning, the Bundesverband relied on a decision by the German Supreme Court (BGH) which in 2012 confirmed the cancellation of the national (German) mark „Neuschwanstein“. The EUIPO dismissed both the request for a declaration of invalidity as well as the appeal later lodged by the Bundesverband against the decision. The Board of Appeal decision has now been confirmed by the GC. The General Court stated that the term "Neuschwanstein" was a fancy name ("The new stone of the swan") which tangibly designated the castle as a building. Accordingly, while a geographical connection between the castle and the village of Schwangau could be made, the Court did not consider the castle itself a geographical location, and did not expect the average consumer in the EU to connect the name of the castle with the goods and services. Considering furthermore that the "Neuschwanstein" castle was a museum attraction not (primarily) known for its souvenirs but because of its unique architecture – with the goods not being produced in the castle itself, but only marketed and sold there –, the GC concluded that the EUTM "Neuschwanstein" would not be understood as a geographical designation. According to the GC, "Neuschwanstein" did not lack the required distinctive character, as the fanciful word had no descriptive reference to the goods and services concerned. The sign, used in combination with the offered goods and services, was hence suitable to distinguish those goods and services from others. In conclusion, the GC clarified that the EUTM Regulation was an autonomous system independent of national systems, and that the contravening decision of the BGH was therefore not prejudicial. In Austria, trademark protection for merchandising products has also been strengthened in recent years. For instance, the management of the Spanish Riding School has prevailed against the unauthorized sale of souvenir merchandise with the words "Spanish Riding School" (see news October 2011 – "Protection of merchandising articles strengthened").