Sellers of unauthorised branded souvenirs, a ubiquitous part of tourist sites worldwide, may find their activities restricted following a recent CJEU decision concerning Neuschwanstein Castle in Germany.
Schloss Neuschwanstein, scenically situated on a hilltop in southern Bavaria, is one of Germany's most popular tourist attractions. An extravagant and idiosyncratic palace, it served as the inspiration for Disneyland's Sleeping Beauty castle and was originally designed and built in the late nineteenth century for the eccentric King Ludwig II in honour of his composer friend Richard Wagner.
In 2011, the German State of Bavaria – which owns the castle – applied for an EU trade mark (EUTM) at the EU Intellectual Property Office (EUIPO) for the word NEUSCHWANSTEIN for goods in several classes typically associated with souvenirs. These included classes 21 (glassware), 24 (textiles) and 25 (clothing). The EUTM was duly registered and subsequently challenged by a German souvenir federation, which argued that it described the products' geographical origin, lacked distinctive character and was registered in bad faith (contrary to Articles 7 and 52 of the EUTM Regulation 207/2009/EC). All of these arguments failed successively at the EUIPO's Cancellation Division and Board of Appeal, the EU General Court and, last month, at the CJEU (see the CJEU judgment here for full details).
The CJEU noted the public interest justification for refusing descriptive signs, as outlined in Windsurfing Chiemsee . However, it found that just because goods covered by a mark are offered in a specific place, this does not necessarily constitute a descriptive indication of their geographical origin. It found that Neuschwanstein Castle is a historical museum location rather than a specific geographical place. It is not a site where souvenirs are manufactured or marketed, as the goods involved could technically be made and sold anywhere in the world. Neuschwanstein is ultimately not famous for the souvenir items it markets and sells, but for its unusual architecture and illustrious history.
As a result, the CJEU found that the contested mark is distinctive and not indicative of the geographical origin of the goods it covers. The souvenir federation’s appeal was therefore dismissed in its entirety.
Interestingly, the CJEU's decision is in contrast to the German Federal Court's cancellation of the German national trade mark in 2012, highlighting a possible discrepancy between the approach to these questions at a national and European level.
The judgment may open the floodgates for the owners of heritage sites, who can now potentially monopolise their sites' names and prevent traders from using those names. They may also look to profit from licence agreements which allow specific authorised traders to use the sites' names on their merchandise in return for royalties.
The CJEU's findings will naturally concern unauthorised souvenir traders, who may now face cease and desist letters for using protected words on their goods. Indeed, the Bavarian Palace Department has reportedly commented that its protection of Neuschwanstein mirrors that of Windsor Castle and Buckingham Palace, among various other prominent European landmarks. This therefore opens up the possibility that trade mark registrations and corresponding infringement proceedings within the souvenir industry may increase. It will be very interesting to see how national IP offices and national courts will apply and interpret the ruling.
With special thanks to trainee, Chris Eykel, for his contribution to this article.
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