The Court of Justice of the EU has recently upheld a decision of the EU General Court that the “Neuschwanstein” trademark is valid under Article 7(1)(c) of the EU Trade Mark Regulation. It rejected an argument that it was indicative of the geographical origin of the goods and services covered by that trademark.

Tourist Destination

Neuschwanstein Castle is a famous tourist destination.

Today Neuschwanstein is one of the most popular of all the palaces and castles in Europe.

Every year 1.4 million people visit "the castle of the fairy-tale king". It would have had more than 200 rooms if completed, and state of the art flushing toilets were installed on each floor. In the summer around 6,000 visitors a day stream through rooms that were intended for a single inhabitant.

The Bavarian Castle Department wished to assure the quality of souvenirs associated with Neuschwanstein Castle. It sought to do so by registering the word “Neuschwanstein” as both a German trademark, and a European trademark (EUTM). BSGE (The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise eV), a trade network of souvenir producers, challenged the registrations.

The German Federal Court of Justice cancelled the German national trademark, as it applied to all goods and services that were relevant to the tourism industry.

However, the EU Intellectual Property Office (EUIPO) and the General Court rejected the BSGE’s argument that the “Neuschwanstein” trademark was both non-distinctive, and descriptive, as it indicated the geographical origin of the goods and services covered by it.

It was held that while those goods and services were marketed in a particular location, they could equally be marketed anywhere. The trademark did not describe any characteristic pinning it down to that geographical locality.

Descriptive or non-distinctive?

The BGSE’s appeal to the Court of Justice was dismissed in its entirety on 6 September 2018.

The CJEU held that the trademark was neither descriptive nor non-distinctive.

Although goods and services may be offered in a specific place, that did not necessarily connect the place with those goods and services covered by the trademark.

None of the services covered by the Neuschwanstein trademark (catering for guests; organisation of travel, for example), were in fact offered directly on-site at the castle.

Additionally, there was nothing to say that goods covered by the Neuschwanstein trademark could not be marketed and sold elsewhere.

To try and understand the reasoning it is sometimes helpful to think about registered rights as monopolies.

If it were possible to have a registered right for say “Glasgow” that would arguably serve to prevent other businesses in Glasgow from using the term.

The term is descriptive, as it could be said that the goods were manufactured in Glasgow. Goods and services holding designating characteristics, qualities or distinctive features connected with their geographical origin, such as a craft, a tradition or a climate which is a characteristic of a particular place fall into this category.

The example given by the Advocate General was that "the relevant public will associate certain qualities with Limoges porcelain so that, in relation to porcelain goods, the ‘Limoges’ sign is descriptive of a geographical origin."

Where are the goods produced or services rendered?

The CJEU concluded that Neuschwanstein Castle was not, as such, a place where goods are produced or services are rendered.

The Neuschwanstein trademark could therefore not be indicative of the geographical origin of the goods and services covered by it.

It also re-affirmed the General Court’s finding that registration to file the trademark had not been made in bad faith.

Early commentary suggests that the ECJ’s findings in the case may be disappointing for those manufacturing and marketing souvenirs, on the basis that owners of famous sites may now seek to obtain domestic trademark registrations for the names of locations of cultural heritage.

However, as the ECJ itself stressed in this decision, the EU trade mark system is an autonomous system with its own set of objectives and rules peculiar to it.

There is therefore no guarantee that such a finding would be replicated under domestic IP law. With current uncertainty around the legislative landscape post-Brexit, the picture is even less clear.

If you own or operate a tourist attraction and wish to discuss applying for a registered trademark, or have a trademark dispute, please get in touch.

See also: Scotch Whisky Association toasts success in Europe in “geographical indication” battle

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