The case: Munich, the capital of Bavaria, has hosted its OKTOBERFEST [October festival] for more than 200 years. It was first celebrated on 12 October 1810 to mark the wedding of Ludwig I, later King of Bavaria. Since then, it has been held every year in the city.

 

 

The city applied for protection of the name of its most important festival, for a comprehensive list of goods in 28 classes in the European Union:

 

 

However, during the registration process, objections were raised, including by third parties. These objections referred to 2,054 different Oktoberfests around the world. They argued that a generic name such as Oktoberfest should not be monopolised for the benefit of one city.

The first examiner at the EUIPO also largely rejected the application, saying that the name Oktoberfest referred only to a festival taking place in October. Printed matter in Class 16 could be thematically related to an Oktoberfest. Most of the goods and services applied for, such as clothing, food, travel services or the organisation of folk festivals, could be offered at such a festival as a venue. In the case of foodstuffs such as sausages, consumers would assume that they were particularly associated with an Oktoberfest. Such goods and services have a thematic connection with the festival, and the name was therefore descriptive of all those goods and services. According to the evidence, the name had not become established in the European Union as a distinctive sign of Munich, and especially not in Austria. Less than 50% of the public would associate the name with the city of Munich.

The examiner accepted the trade mark only for financial services, water supply, film development, IT services and licensing of intellectual property, as these services had nothing to do with the actual Oktoberfest. The mark was therefore distinctive for those services.

The City of Munich appealed against the examiner’s decision to refuse the trade mark in relation to goods and services, and it was more successful before the Board of Appeal. However, the Board of Appeal also found that, the name OKTOBERFEST referred only to a folk festival that took place in October. The main characteristics of folk festivals are the provision of music, the serving of beer, the provision of food and drink and the operation of fairground rides and similar attractions. The term ‘Oktoberfest’ is descriptive only of the fact that they are provided at a festival in October. The mark could not be protected in this respect. In the case of food and beverages, it was added that they could be distinguished by their taste concept, precisely in relation to the taste expected by the public at an Oktoberfest.

However, in the case of fresh fruit, this sufficiently direct and concrete reference to the name OKTOBERFEST was rejected. The same applied to hotel services, since folk festivals do not offer overnight accommodation. Nor was there a sufficiently close connection between the meaning of the word and the inherent characteristics of tourism advertising, travel agencies, a car park service or the hire of uniforms.

What about the merchandising items registered, such as cardboard coasters for beer mugs, serviettes, playing cards, or printed matter related to the theme of the festival? The fact that they were souvenirs was irrelevant. (This aspect has been discussed on this blog in terms of the Neuschwanstein decision of the European Court of Justice.) The possibility of acquiring a product as a merchandising item on the occasion of attending a particular event is a feature of the event, but not a feature of the product. Moreover, a trade mark proprietor will be legitimately keen to take advantage of the opportunity to promote the sale of its own goods, so that a purchaser of a product decides to buy it not because of the quality, durability, functionality, etc. of the product as such, but because they like a particular word or image on the product for other (e.g. emotional) reasons. Since it was not proven that so-called souvenir articles bearing the name of the folk festival are sold at folk festivals, the mark was considered to be distinctive in that respect.

Did this also apply to beer mugs/glasses and clothing, shoes and headgear? Yes, said the Board of Appeal in the application proceedings. It was conceivable that there might be a typical Oktoberfest ‘look’, but because this had not been proven, the trade mark was therefore also registered for these products.

However, a Swedish law firm objected and filed an application to cancel the trade mark insofar, instructed to do so, apparently, by an anonymous client. This application has so far been partially successful.

Beer glasses and mugs, as well as clothing, footwear and headgear, are sold on the relevant market by many different companies as ‘Oktoberfest-style’ products. The name thus describes an objective characteristic of the goods. In that regard, it is irrelevant whether the relevant consumer perceives the sign as referring to the Oktoberfest in Munich or to any Oktoberfest elsewhere.

However, this is not the last word on beer glasses, beer mugs, clothing, footwear and headwear. The City of Munich has just filed an appeal against the Cancellation Division’s decision.

On the other hand, the Swedish application for cancellation was rejected for works of art in glass, porcelain or stoneware; tableware; porcelain; non-electric household or kitchen utensils and containers; underwear; swimwear; coats; uniforms; headbands; gloves; overalls; bibs, not of paper; pyjamas; and play clothes for babies and infants. The trade mark is currently still registered for these products.

You can see how difficult it is to get even a well-known generic name for a folk festival protected as a trade mark in the European Union. Does the word OKTOBERFEST describe goods or services or their characteristics in ordinary language? Is it a characteristic of the goods that they can be worn or used at a folk festival?

It will be interesting to see what the outcome of the case will be concerning outerwear, footwear, headgear and drinking vessels.

 

Fourth Board of Appeal of EUIPO of 26/08/2020, R 1840/2019-4

EUIPO Cancellation Division of 29/06/2023, C 53 663.

 

Learnings: The protectability of generic event marks depends on whether the trade mark term can describe the goods or services applied for, or a characteristic thereof, in a sufficiently direct and specific manner and must therefore be kept free for competitors. ‘Feature’ means any characteristic of the goods or services that is likely to be perceived as relevant by the relevant consumer in the context of their purchasing decision and which they are likely to remember when they perceive the term, such as the intended purpose, the value or the geographical origin of the goods or services. It is therefore relevant which goods and services make up the event designated by the mark and whether the goods or services used at the event can constitute a separate category specifically for the event.

 

Note: For information on the protectability of souvenir marks, see the BestCase below:

 

Increasing sales through cultural brands? – NEUSCHWANSTEIN