Trade mark for designation to cultural heritage can be registered for souvenir-type goods, as it contains no designation of characteristic of the goods

C-488/16 P

Bundesverband Souvenir v EUIPO

Trade marks: Validity

06 Sep 2018

The matter at hand

Neuschwanstein is the name of a famous castle situated in Bavaria, Germany. Freistaat Bayern (the federal state Bavaria) owns and operates the castle as a museum.

Subject of this matter is the validity of an EU wordmark NEUSCHWANSTEIN, registered in the name of Freistaat Bayern, for everyday consumer goods (such as jewellery, writing paper, glassware, porcelain, clothing, games, coffee, tea, honey, sweets, drinks, ashtrays etc.), which could also be regarded as souvenir items, and for services related to the management and operation of a castle.

Bundesverband Souvenir (a German trade association for the souvenir industry) filed an application with EUIPO for a declaration of invalidity of the mark on the basis that the mark would consist of indications which might serve to designate the geographical origin or of other characteristics inherent to the goods and services concerned. In addition, it argued that the mark is devoid of distinctive character in respect of the goods and services concerned. Lastly, Bundesverband Souvenir was of the opinion that the application for registration of the mark had been made in bad faith.

The Cancellation Division of EUIPO rejected the application for a declaration of invalidity of the contested mark. Both the Board of Appeal and the General Court confirmed the Cancellation Division’s decision. Bundesverband Souvenir subsequently appealed to the ECJ.

The judgment of the ECJ

As part of its first ground of appeal, Bundesverband Souvenir held that the General Court failed to classify the name ‘Neuschwanstein’ as an indication of the geographical origin of the goods and services covered, in the sense of of Article 7(1)(c) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. In this regard, the ECJ first examines whether the name ‘Neuschwanstein’ is descriptive in so far as the memory to which that name relates is an indication of a quality or an essential characteristic of the goods and services covered by the contested mark.

In that regard, the ECJ emphasis that none of the classes of the Nice Agreement concerns ‘souvenir items’ and that, consequently, the General Court was fully entitled to consider that the goods concerned are everyday consumer goods and that the services concerned are everyday services facilitating the management and operation of the castle (paragraph 42). In addition, the ECJ notes that it is not apparent from the case file that the goods and services concerned would have “particular characteristics or specific qualities for which Neuschwanstein Castle would be traditionally known and in respect of which the relevant public would be likely to believe that they originate there or that they are manufactured or provided there” (paragraph 43).

The fact that the goods are sold as souvenir items is found to be irrelevant for the purpose of assessing the descriptive character of the name ‘Neuschwanstein’. According to the ECJ, “the souvenir function ascribed to a product is not an objective characteristic inherent to the nature of that product, since that function is determined by the free will of the buyer and is focused solely on that buyer’s intentions” (paragraph 44). The ECJ also considers that, in so far as the name designates the castle, “merely affixing that name on the goods concerned enables the relevant public to regard those everyday consumer goods also as souvenir items. The fact that they constitute souvenirs through the mere affixing of that name is not, in itself, an essential descriptive characteristic of those goods” (paragraph 45).

On this basis, the ECJ concludes that the name ‘Neuschwanstein’ is not an indication of a quality or an essential characteristic of the goods and services covered by the mark (paragraph 46).

In the second place, and in light of Windsurfing Chiemsee (C‑108/97 and C‑109/97), the ECJ examines whether the name ‘Neuschwanstein’ should be regarded as another sort of tie connecting the goods and services for which the mark is registered with Neuschwanstein Castle.

In this regard it is first considered that the place of marketing may not necessarily serve as such a tie connecting the goods and services covered by the contested trade mark with the place concerned, even in the case of items sold as souvenirs (paragraph 49). The ECJ agrees with the Advocate General that “the mere fact that those goods and services are offered in a particular place cannot constitute a descriptive indication of the geographical origin of those goods and services, in so far as the place where those goods and services are sold is not capable, as such, of designating characteristics, qualities or distinctive features connected with the geographical origin of those goods and services, such as a craft, a tradition or a climate which is a characteristic of a particular place” (paragraph 50).

The ECJ determines that in the present case, the Neuschwanstein Castle is famous not for the souvenir items it sells or the services it offers, but for its unusual architecture and that it is not apparent from the case file that the contested trade mark is used to market specific souvenir products and to offer particular services for which it would be traditionally known (paragraph 51). Also, none of the services concerned are directly offered at Neuschwanstein Castle and it cannot be excluded that the goods may be sold beyond that castle’s surroundings (paragraph 52).

On the basis of those circumstances, the ECJ concludes that, as Neuschwanstein Castle is not, as such, a place where goods are produced or services are rendered, the contested trade mark could not be indicative of the geographical origin of the goods and services it covers (paragraph 54).

As the second ground of appeal, Bundesverband Souvenir in essence claims that the General Court provided an inadequate statement of reasons for its assessment of the distinctive character of the contested trade mark for the purpose of Article 7(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark. In this regard, the ECJ concludes that, under the circumstances as mentioned in paragraphs 64 through 68, “the General Court gave reasons, to the requisite legal standard, for the existence of that distinctive character by stating that the mere affixing of that mark on the goods and services concerned enables the relevant public to distinguish them from those sold or provided in other commercial or tourist areas” (paragraph 69).

As the third and final ground of appeal, Bundesverband Souvenir claims the infringement of Article 52(1)(b) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark (the bad faith ground). The ECJ declares part of the ground inadmissible and part unfounded (paragraphs 79 through 84).

Commentary

This matter may be of great importance for the souvenir industry, as it pertains to complicated questions surrounding the appropriation through trade mark law of the commercial value surrounding cultural heritage. In this judgment, the ECJ does not explicitly address this aspect. In fact, upon reading the judgment, one could even get the impression that the trade mark is like any other, ‘normal’, trade mark, as the ECJ simply applies the ‘normal’ criteria for Articles 7(1)(b) and (c) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.

Whether this is a ‘normal’ trade mark depends however on whether its scope of protection also covers the use of the sign ‘Neuschwanstein’ for souvenirs referring the Neuschwanstein Castle. The scope of protection of the mark is not addressed by the ECJ, but many may be inclined to think such use will fall within its scope of protection.

If we assume these ‘many’ to be correct, this is by no means a ‘normal’ trade mark, not from a legal nor from an economic point of view: ‘Neuschwanstein’ is already a household name, but as a source identifier for a castle, not for the goods and services concerned. By obtaining a trade mark for a multitude of goods and services, Freistaat Bayern would, under the aforementioned assumption, largely appropriate the economic value of the souvenir industry surrounding this castle. In other words: the trade mark would then serve as a Trojan horse to effectively obtain the economic value surrounding the goodwill of something that is not the object of the trade mark registration.

This may not come across as abuse of trade mark law, but that is likely only the case as it is Freistaat Bayern who is the proprietor of the mark and not, say, some entrepreneurial shop owner from the area. And that makes this judgment complicated: the criteria applied by the ECJ are so blind to the fact that the mark may enable the proprietor to appropriate the goodwill to existing cultural heritage, that this fictional shop owner could have obtained this trade mark if he would have applied for registration before Freistaat Bayern did.

It is not likely that this aspect will have gone by the ECJ completely unnoticed. If the ECJ is of the opinion that trading in Neuschwanstein souvenirs may be monopolized through this mark, it’s more likely that the ECJ intends to address the issue of the fictional shop owner through the concept of bad faith application: in the event that the fictional shop owner, and not Freistaat Bayern, were to have applied for the mark, the latter would likely have been able prevent the first from registering the mark on that ground. This could work out as an effective way to enable the ‘right’ (legal) person to take control over the goodwill surrounding the cultural heritage.

However, it remains to be seen whether such an approach may not be problematic as well, for one as there may be several parties who could claim to apply in good faith for a mark like this. There may, for example, be a foundation preserving the legacy of the creator of a work of cultural heritage or the legacy of his or her principal, an owner of the work, a municipality or area where the work is located or on display, a museum on the creator of the work, or on his or her principal, etc. These different stake holders may end up having to pay royalties to one of them to be able to sell souvenirs – just for the reason that one of them was the first to appropriate the goodwill of existing cultural heritage.

Given all the remaining uncertainties surrounding the complicated questions on marks referring to cultural heritage, it would have been useful if the ECJ would have elaborated somewhat more on the topic – in stead of limiting itself to a ‘normal’ assessment of Articles 7(1)(b) and (c) of Trade Mark Regulation 207/2009Council Regulation [EC] No 207/2009 of 26 February 2009 on the Community trade mark.