In an opinion of 11 January 2018, the Advocate General has recommended to uphold the General Court's decision in the Neuschwanstein castle dispute finding that the trade mark Neuschwanstein is not descriptive of the goods and services covered; Bundesverband Souvenir-Geschenke-Ehrenpreise v EUIPO, (C-488/16 P) of 11 January 2018.

Background

Once upon a time the famous German castle Neuschwanstein was commissioned by the 'fairy tale king' King Ludwig II of Bavaria in the mid-nineteenth century. It has since turned into a major tourist attraction and also inspired the castle in the original Disney version of the Sleeping Beauty. And as we all know, where there is commercial success, there is scope for a trade mark dispute and so the story begins...

The Bavarian Castle Department, a division of the Bavarian State government, was concerned about the quality of the souvenir trade connected to the castle and, in an attempt to regulate the souvenir industry, registered the word mark "Neuschwanstein" as German trade mark and as EUTM. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE), a trade network of souvenir producers filed invalidity applications against the mark at the German Patent and Trademark Office and the EUIPO, inter alia, arguing that the trade mark was akin to 'censorship' of the Neuschwanstein souvenir trade.

The BSGE succeeded in cancelling the German national trade mark, (German Federal Court of Justice, case reference I ZB 13/11, of 8 March 2012) in respect to all of the relevant goods and services. However, the fate of the EUTM looked more promising. The EUTM Neuschwanstein had been registered by the State of Bavaria in 2011 covering a broad range of goods and services. The BSGE subsequently filed an application for invalidity at the EUIPO arguing that the mark was descriptive, i.e. designated the geographical origin of the goods and services, as well as non-distinctive. The EUIPO disagreed and refused the invalidity application, which was confirmed by the EUIPO's Board of Appeal and General Court. Notably, the Board of Appeal held that no bad faith on the part of state of Bavaria had been established for the purposes of Article 52(1)(b)EUTMR.

The General Court rejected the BSGE's invalidity application holding that the sign Neuschwanstein was an invented original name which referred to the castle as building, without establishing a link with the good and services, and functioned as a trade mark. The castle itself was neither the place of production of the goods covered, nor the place where the services were offered and could therefore not be regarded as a reference to the geographical origin of the good and services..

Advocate General's opinion

In his opinion of 11 January 2018, the Advocate General Wathelet agreed with the General Court's assessment that the trade mark Neuschwanstein was not invalid under Article 7(1)(c) EUTMR since it was not indicative of the geographical origin of the goods and services covered by the trade mark. While the BSGE had argued that the Neuschwanstein castle was geographically locatable and could therefore be indicative of geographical origin, the AG again pointed out that the goods and services covered by the mark were merely marketed at the castle but could equally be marketed anywhere.

Notably, the sign Neuschwanstein did not describe any characteristic attributable to having been produced in that geographical locality. The AG expressly agreed with the General Court's assessment of goods and services covered as everyday goods and services:

"...from a legal perspective, the goods covered by the contested mark are not souvenir items..., for example, t-shirts, knives, forks, plates, teapots, etc. Under the Nice Agreement, there is no class entitled 'souvenir items' since, if such a class existed, it would be so wide-ranging that it would not be capable of designating a specific category of goods. In addition, as souvenirs are items that recall a person, place or event, they are items evoking emotions. Human emotions cannot be covered by an EU trade mark since they do not constitute goods or services for the purposes of Article 7(1)(c) [EUTMR]. For that reason and despite BSGE's assertion to the contrary, this appeal does not concern the geographical origin of souvenir items but everyday goods."

The AG concluded that the name of the Neuschwanstein castle was not descriptive of goods and services covered and that the CJEU should uphold the GC's decision.

More information about the castle can be found on its official website here from where the above screenshot was taken.