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On September 6, the Court of Justice of the European Union (CJEU) upheld registration of Neuschwanstein as a European Union trademark by the Free State of Bavaria, dismissing the appeal lodged by Bundesverband Souvenir, an association of producers of gift and souvenir items.

Bundesverband Souvenir appealed the judgment by the European Union’s General Court that allowed registration of the “Neuschwanstein” trademark. The association claimed that the mark was devoid of distinctive character and asserted that the mark was descriptive, capable of indicating the geographical origin of the goods covered by the trademark, thus (i) breaching article 7.1, letters b) and c), respectively, of Regulation (EC) 207/2009 (now Regulation (EU) 2017/1001), and (ii) breaching the absolute grounds for invalidity in article 52 of that regulation.

Under case law, signs or indications having descriptive character are barred from registration in the public interest, to enable those signs to be freely used by all rather than reserved for use by a single company merely by having been registered as trademarks, because they may serve to designate such product characteristics as quality and may also influence consumer preferences through association of the goods with positive feelings. For such an association to occur, there must be a connection between the geographical name and the goods in question.

Instead, the CJEU held that the goods covered by the contested trademark are everyday consumer goods and the corresponding services are everyday services facilitating management and operation of the castle that do not have particular characteristics or qualities that can be associated with Neuschwanstein castle such that the public would believe that they originate or are manufactured there. It pointed out that the fact that the goods are sold as souvenir items is insufficient for assessing the descriptive character of the name “Neuschwanstein,” as the souvenir function is not an objective characteristic but one determined by the free will of the buyer.

It also considered that the fact that the goods and services are sold at a given location cannot be considered to be a descriptive indication of their geographical origin without designating particular characteristics or qualities associated with that geographical origin. The CJEU held that Neuschwanstein Castle is not known for the souvenir items it sells or for the services it offers but for its unusual architecture. Therefore, coupled with the fact that the goods may be sold outside the castle and its surroundings, the court ruled that the “Neuschwanstein” name is not connected with a quality or essential characteristic of the goods or services to which the contested trademark is affixed.

Secondly, regarding the lack of distinctive character, the CJEU upheld the General Court’s ruling that the name “Neuschwanstein” means “new swan stone,” a fanciful and colorful name with no descriptive content that enables (i) the goods and services sold under that name to be distinguished from others sold and provided in other commercial and tourist areas, and (ii) not only a link to be drawn with a visit to the castle but also the commercial origin of the goods and services to be distinguished and associated with the Free State of Bavaria.

Therefore, the CJEU concluded that there is no legal basis for holding registration of “Neuschwanstein” as a trademark to be invalid, as the name possesses distinctive character that enables it to differentiate goods and services bearing it in the marketplace, allows a certain business origin to be attributed to it, and additionally lacks descriptive character as regards the geographical origin of the goods and services; therefore, it does not breach article 7 Regulation 207/2009 and does not breach any absolute ground for invalidity.

By Alicia Costas

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