Free State of Bavaria successfully defends its “NEUSCHWANSTEIN” trademark

The General Court (EGC) of the European Union has with a judgment of 5 July 2016 ruled that the Community trademark “NEUSCHWANSTEIN” filed by the Free State of Bavaria qualifies for trademark protection (Case T-167/15).

The mark “NEUSCHWANSTEIN” was filed by the Free State of Bavaria as a Community trademark and registered for various goods and services including souvenirs in 2011. In 2012, the Bundesverband Souvenir – Geschenke – Ehrenpreise e. V. (federal trade association) applied for the mark to be declared invalid pursuant to Article 52 (1) a of the Community Trademark Regulation (CTMR). According to Article 7 (1) b and c of the CTMR, trademarks which are devoid of any distinctive character or which consist exclusively of signs which may serve to designate geographical origin cannot be registered. The European Union Intellectual Property Office (EUIPO) dismissed both the application for the mark to be declared invalid and the appeal filed against this by the Federal Association. The EGC confirmed this decision in full.

The EGC first of all held that the designation “NEUSCHWANSTEIN” was not an indication of geographical origin in the meaning of Article 7 (1) c or the CTMR because this had to describe a location which is associated by consumers of the European Union, being the relevant public, with the registered product groups, for example, because the geographical location is famous or well-known for the product group concerned. The Court stated that although Neuschwanstein Castle could be localised, it was not, however, a geographical location in the meaning of Article 7 (1) c of the CTMR because the castle was above all a museum location which was not known for the souvenirs sold there, but thanks to its unique architecture. It also noted that Neuschwanstein Castle was precisely not a location where goods were manufactured or services provided and that a sufficiently direct and specific relationship between the trademark “NEUSCHWANSTEIN” and the registered products and services could therefore not be created.

In the opinion of the EGC, the sign “NEUSCHWANSTEIN” was not lacking the distinctive character required in accordance with Article 7 (1) b of the CTMR because the invented name chosen by King Ludwig II (the “swan’s new stone”) is capable in connection with the offered goods and services of distinguishing these from other goods and services. The trademark is therefore capable of meeting the key function of a trademark, indicating the commercial origin of goods and services. With this assessment, the EGC is expressly opposing a decision of the German Federal Court of Justice (German Federal Court of Justice, decision of 8 March 2012, Case I ZB 13/11), which held with respect to the national trademark “Neuschwanstein” which the Free State of Bavaria registered parallel to the Community trademark that for numerous product groups this sign lacked the distinctive character in the meaning of Section 8 (2) No. 1 of the German Trademark Act. The German Federal Court of Justice stated in the grounds of its decision that the relevant public being addressed would only understand the word “Neuschwanstein” in connection with souvenirs due to the castle being very well known and not as a product mark. With respect to this decision of the German Federal Court of Justice, the EGC clearly stated that the provision governing Community trademarks had to be interpreted as an autonomous system independent of the interpretation of national courts, even if, as in Section 8 (2) No. 1 of the German Trademark Act, the national provisions are based on a harmonising directive.

Despite its defeat (to a large extent) before the German Federal Court of Justice, the Free State of Bavaria can accordingly still invoke the trademark protection of the mark “NEUSCHWANSTEIN” and exploit and monetise it accordingly by offering goods and services, as well as licence agreements with souvenir retailers and manufacturers.

This judgment has special significance for operators of tourist attractions and museums that want to have the corresponding designations protected by trademarks. The diverging judgments of the German Federal Court of Justice and the EGC generally show, however, that similar cases can according to the underlying protection system (German Trademark Act, CTMR) be assessed differently and therefore the parallel registration of the sign as national trademark and a Community trademark should always be considered as a strategic option, in order to achieve the greatest possible level of protection for the registered sign.