A geographical name serves as a mean to identify a location. The latter has a big impact on the consumer as it inspires a feeling, or a memory linked to a country or a city name.
For example, Monaco represents luxury, France makes you think of “savoir vivre” with fashion, art and wine, and Germany makes you dream of sports cars.
That is the reason why, from an Intellectual Property approach, a geographical name can have a big impact on a trademark as it can undeniably increase its value.
The big question is: is it possible to protect a geographical name?
The essential functionality of the protection of a geographical indication consist of guarantying to the consumer, the origin of the products and their specifics qualities coming from their location (decision of 29/03/2011, C – 96/09, Bud, EU: C: 2011: 189, § 147).
In Europe, geographical names are regulated by the European Union trademark regulation (EUTMR). According to its article 7, §1st, C, trademarks cannot be registered if they consist exclusively of an indication who serves to designate the geographical origin of production of the goods or of rendering of the service. According to a well-established case-law, this article serves the general interest and its aim is to avoid that one geographical indication is monopolised by one entity. (decision of 4th may, 1999, Windsurfing Chiemsee, C-108/97 & C-109/97, EU: C: 1999: 230)
Moreover, a trademark in order to be registered must be distinctive and cannot be descriptive as stated in article 7, §1st, B, EUTMR. The reason is simple, the country name such as any trademark must present distinctive characteristics. Indeed, it is not allowed to adopt as a trademark a geographical name that could describe the origin of the products.
To the contrary, a trademark cannot be refused if the geographical name means nothing to the public of reference in relation to the products and services coming from the geographical zone. (decision of 4th may, 1999, Windsurfing Chiemsee, C-108/97 & C-109/97, EU: C: 1999: 230)
To sum up, the main goal of the regulation is to guarantee the availability of a geographical name, when the latter indicates to the public of reference the origin of the products.
Introduction of the decision:
To quickly introduce this decision’s background, you have to note that the castle “NEUSCHWANSTEIN” is the property of the free State of Bavière in Germany. It is today, one of the most famous castle in Germany and is admired by more than a million tourists every year.
In December 2011, the free State of Bavière registers the European trademark “NEUSCHWANSTEIN” under the number 10144392 for various goods and services such as glasses, pens, clothes, food and ashtrays.
However, in February 2012, a German company specialized in the sector of ‘souvenir’ goods and trophies introduced a nullity action against this trademark. The plaintiff was acting on the dual grounds of article 7, §1st, C and article 7, §1st, B of the EUTMR. Moreover, the German company based its argumentation on the article 52 §1 who grounds for invalidity, if a trademark is registered contrary to the rules mentioned in the article 7 of the EUTMR.
Nevertheless, after examinations from the EUIPO and the Tribunal (T-167/15) the action was rejected by both entities. Hence, the case was referred to the European Court of Justice who based his analysis on the following articles:
-Article 7, §1st, C, regarding the geographical name “NEUSCHWANSTEIN”
The Court of Justice of the European Union stated that as the castle was not a place of production of goods and services, the trademark “NEUSCHWANSTEIN” could not be considered as an indication of a geographical origin of the products and services it designates.
To resume, the Court considers that a geographical name can only be refused, if at the time of the filing of the trademark the geographical name suggests to the public of reference a geographical place linked to the concerned products. According to the Court, the name “NEUSCHWANSTEIN” must be considered as an original and imaged name as it means “the new rock of the swan”.
Indeed, this Castel is not famous for the production of goods and services, but he is best known as a museum space.
Hence, there is no reason to consider that it exists a general interest to preserve the availability of the name, notably regarding its capacity to influence the public of reference indeed, the latter would not make the link between the geographical name and the products.
-Article 7, §1st, B, regarding the distinctiveness of the trademark “NEUSCHWANSTEIN”
The Court of Justice of the European Union ruled the trademark “NEUSCHWANSTEIN” as distinctive. As mentioned above, the name “NEUSCHWANSTEIN” means “the new rock of the swan”; hence, this name has to be considered as a fanciful name without any link with the products and services commercialized.
Due to the absence of descriptiveness of the trademark, the Free State of Bavière can legitimately register the name “NEUSCHWANSTEIN” as a European trademark, because this name only evokes a museum area of whom it is the owner.
This decision sheds lights on the complexity of the rules which applies to geographical names.
Indeed, beyond the principal’s restrictions there are many aspects to take into consideration.
It is important to bear in mind, that the castle “NEUSCHWANSTEIN” is not known for the ‘souvenir ‘products they sell nor for the services they propose, but for its particular architecture. Therefore, the plaintiff could not base his argumentation on the fact that the place of commercialization has to be considered as a geographical indication. However, the decision of the Court would have been different if the goods were produced in the castle.
Inès Bramanti & Annabelle Baysan – IP Lawyer