German Federal Patent Court decides in Neuschwanstein castle trade mark dispute

News in the trade mark dispute surrounding the German castle Neuschwanstein (see tytoc collie's report here) .

By way of reminder: the Bavarian Castle Department (which is part of the Bavarian state government)has the task of regulating the souvenir trade connected to the famous Bavarian fairy tale castle and its surrounding area and registered the word mark "Neuschwanstein" in 2005. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE) - which describes itself as "a network of producers, wholesalers, exporters, retailers and trade representatives from the souvenir, sports clubs, trophy and festive items (industry)" - objected to this. Arguing that the Bavarian Castle Department's trade mark registration was akin to "censorship" of the Neuschwanstein souvenir trade, the BSGE filed for an invalidity of this mark at the DPMA. The DPMA (see IPKat report here) decided in the BSGE's favour and invalidated the mark, according to media reports, the DPMA found that "Neuschwanstein" was an "often used", non-distinctive term" and thus not capable to indicate trade origin of the goods and services marketed under the sign.

The German Federal Patent Court has now decided this matter and issued a press release confirming that it has upheld the DPMA's decision to cancel the "Neuschwanstein" trade mark. In its press release of 8 February 2011 concerning "Neuschwanstein" (case reference 25 W (pat) 182/09 of 4 February 2011) the court has provided the following information which this Kat has translated and summarised below.

The sign "Neuschwanstein“had been registered as a trade mark in 2005 for a multitude of goods and services. On 20 November 2007 the German Patent and Trademark Office decided on an invalidity application concerning this mark holding that the mark should be invalidated because it fell foul of § 8 (2) No. 1 German Trademarks Act (MarkenG) since it had lacked distinctiveness at the time of registration and still lacked distinctiveness now.

Upon appeal, the 25th Senate of the German Federal Patent Court upheld this decision and, inter alia, decided that the term "Neuschwanstein" described the castle Neuschwanstein which was commissioned by Kind Ludwig II in the municipality of Schwangau in the state of Bavaria with the castle being a world famous landmark of high (cultural-)historical importance.

As regards to services such as "travel services; catering/hospitality services and accommodation services", the term "Neuschwanstein" does not qualify for trade mark registration since the term could be seen as describing the characteristics of the services in the sense of § 8 (2) No. 2 MarkenG, that is their intended purpose or the geographical origin of rendering the services.

Designations of well-known tourist attractions such as "Neuschwanstein" furthermore lack the necessary distinctiveness under § 8 (2) No. 1 MarkenG concerning such goods that are usually offered in the proximity of such tourist destinations as souvenir articles or to satisfy the demands of tourist with regard to foods, drinks or further articles. This equally applies to services that are usually rendered and offered in a close proximity or in the context of such tourist attractions.

The court stressed that the term "Neuschwanstein" not only described a tourist sight but also a building that is a significant part of the national cultural heritage. The judges further held that designations of cultural sights that are of high importance and/or that are part of the national or international world cultural heritage are common property and as such cannot be monopolised or commercialised through trade mark laws. The court added that these sights usually are not distinctive enough for trade mark registration in the sense of § 8 (2) No. 1 MarkenG, even without a factual reference to claimed goods and services

Given that several aspects of this decision have fundamental importance, the Federal Patent Court allowed a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof). On balance, this Kat believes that the court got it right but cannot help but thinking that the general idea of wanting to control the souvenir output surrounding the Neuschwanstein castle is not a bad one. How about having some kind of licensing committee when it comes to merchandise of such historical sights. Merpel, who likes her newly bought Neuschwanstein t-shirt (left), disagrees and thinks that this German Kat is nothing but a snob.... why not let the tourists decide what the want to spend their money on, rather than the Bavarian state?

Case reference : Bundespatentgericht, 25 W (pat) 182/09, delivered on 4 February 2011.

The court's press release can be found here.
The decision can already be retrieved in its entirety (German, PDF) by clicking here.

German trade mark case law laid bare - again

This Kat has been reviewing German trade mark scholar and practitioner Dr Ulrich Hildebrandt's book Marken und andere Kennzeichen. Already in its second edition the book offers 782 pages of (predominantly) German trade mark law for the reader's delectation. (See here for tytoc collie's short review of the 1st edition.)

This book is not only of a similar size to Kerly's Law of Trade Marks and Trade Names, it is also similar when it comes to the breadth of information covered. On its 782 pages Marken und andere Kennzeichen (in English: "trade marks and other trade signs") offers in-depth information about German trade mark law, including the law on business names, work titles (Werktitelschutz, a German law quirk), domain names, indications of geographical origin as well as helpful overviews of the relevant provisions of neighbouring areas of the law, such as competition law and delict, the German equivalent of tort, comparative advertising. The book consists of 8 parts and 36 individual chapters and is very clearly structured so that the reader can "jump" into the individual chapters and read up on particular matters. It is very much a practitioner's book and geared towards use in every day trade mark practice, so that students may find it a little less engaging and too detailed for their studies. Having said, if you are a student and plan to specialise in this field of the law, the book might give you some idea what you will be facing in every day practice.

Marken und andere Kennzeichen includes the German Bundesgerichtshof's precedents in trade mark matters since 1994 as well as a very comprehensive selection of decisions from the ECJ (or is it CJEU these days?!) and the General Court. Dr Hildebrandt is very much aware of the influence of the ECJ's case law and so the relevant chapters include summaries of the ECJ's line of precedents in the respective field. He also shows the discrepancies between the ECJ's and GC case law and the German Federal Supreme Court and gives helpful tips as to how to proceed in practice. The author also ventures into providing some outlook into how the law may develop further, always making it clear when something is his a personal opinion.

A concise table of contents, a useful index and a comprehensive table of cases and many examples makes this book accessible and easy to work with and its writing style is surprisingly engaging. Dr Hildebrandt has included helpful "checklists" concerning the conception of marks, trade mark strategies, regarding trade sign practice, the question of likelihood of confusion and dealings with customs authorities. It also alerts you to the DPMA's usual practice when it comes to deadlines. Of particular interest for non-German readers will be the chapter on domain name disputes in Germany, which have to be conducted in front of the courts, and the chapter on work title protection and company name protection and the information on disturbance liabality. This second edition of the book covers more recent developments, such as the amendments to the law for improving intellectual property rights (Gesetz zur Verbesserung der Durchsetzung von Rechten des geistigen Eigentums) and "sexy" topics, such as the (German) case law on AdWords and domain name disputes.

Being first and foremost a handbook of German trade mark law, the information on Community trade marks and International mark is nonetheless accomplished albeit a little too short for my taste - admittedly I had to look hard to find something to criticise. While the information provided does not guide the reader through these types of trade mark proceedings in every last detail, chapter 28 "proceedings before OHIM" (Verfahren vor dem Harmonisierungsamt) covers all the important points to look out for in every day practice, including questions as such how to pay the official fees and procedures before the Board of Appeal. Like the rest of the book, this chapter includes comprehensive footnotes with references to case law and tips for further reading.

So, is the book for you? If you are a German trade mark practitioner, represent German clients or if you are a (German) lawyer who has to deal with (German) trade mark matters only on occasion then this book is certainly a book worth having on your shelf in the office (or your desk really). It is well written and concise despite the amount of information covered. One caveat however and you will have guessed this by now - you should be able to read German to a very high standard….

Bibliographic information: publication date 2010 (that is what it says in my copy) 2nd edition, 282 pages, hardback, ISBN 978-3-452-27152-5, Bücher Carl Heymanns Verlag, 128 Euros.
Rupture factor: negligible.

Further details can be found here.

After Google France: OLG Braunschweig decides in AdWord case

Keyword advertising (in particular Google AdWords) and trade marks is an ‘evergreen’ topic and one of this Kat’s guilty trade mark pleasures. While we are still awaiting the ECJ decision in the Interflora case, we recently had the first German decision from the Higher Regional Court of Braunschweig (Oberlandesgericht Braunschweig, case reference: 2 U 113/08 of 24 November 2010) after the ECJ’s cluster of AdWord related decisions of spring 2010.

In Google France (and in Die BergSpechte, Portakabin, Eis.de (also known as bananabay)) the ECJ had provided guidance to the national courts, inter alia, holding that booking of a third party trade mark as a keyword did not affect the ”advertising function” of that trade mark. As regards to the “origin function”, the ECJ had found that an adverse affect - and consequently trade mark infringement - would have to be assumed in two circumstances:
(i) where a third party’s ad suggests that there is an economic link between that third party and the trade mark proprietor; or
(ii) where an ad is so vague concerning the origin of the goods or services that a normally informed and reasonably attentive internet user is unable to determine, on the basis of the advertising link and the commercial message attached to it, whether the advertiser is an unrelated third party or economically linked to that trade mark proprietor.

In its decision of 24 November 2010, the OLG Braunschweig again had to assess the lawfulness of using a competitor’s trade mark as an AdWord. The claimant was selling confectionery, including chocolate and pralines, via its website www. mostshop.com and derived rights in the word/device trade mark "MOST" via a licensing agreement. The defendant was also selling chocolate products and pralines via its websites at www.selection-exquisit.de and www.feinkost-geschenke.de. In 2007, the defendant decided to book an ad via Google AdWords and chose the generic term "Pralinen" (pralines) as a keyword using the "broad match" function ("weitgehend passende Keywords"). Google’s "broad match" function then added the keyword "Most Pralinen" (Most pralines). The consequence of this was that the defendant’s ad was displayed whenever internet users searched for the claimant’s products "Most-Pralinen". The defendant’s ad (which was displayed) looked as follows (translated by tytoc collie):

“pralines
wines, pralines, delicatessen, presents
enjoy and make a gift!
http://www.defendantswebsite.de/“

IPKat comment: with “broad match”, the AdWords system automatically runs ads on relevant variations of the selected keywords, even if these terms are not included in the advertiser’s keyword lists. Keyword variations can include synonyms, singular/plural forms, and what Google calls “… relevant variants of [the selected] keywords, and phrases containing [the selected] keywords” (see here for more information).

The claimant was not impressed and took the matter to court, winning at first instance before the Regional Court of Braunschweig. On appeal, the Higher Regional Court of Braunschweig confirmed this decision and held that internet users who enter a trade mark as a search term into an internet search engine (as opposed to querying generic terms) will assume that the ads that are displayed as a result of this search query are “somehow be economically connected” to the search term they have entered. Thus, even though the defendant’s ad did not include the claimant’s trade mark and despite the fact that the ad pointed to the defendant’s website, the judges nonetheless took the view that the ad was too “vague” since it did not include a clarification that defendant and claimant were not economically linked. The court supported its finding with an analogy: it compared this kind of use of an internet search engine (that is typing a trade mark into the search engine as a search query) to asking a salesperson for a specific trade marked product. Hence, the consumer had the expectation that the ad displayed will then also originate to the trade marked product. Consequently, with the ad being too “vague”, the court held that the defendant was liable for trade mark infringement. The court further found that the defendant was liable under the principle of disturbance liability and had a duty to check whether the “broad match” function had included a third party trade mark to the list of keywords. The court appears to have limited this duty to the point of the selection of the keywords (ex ante) and expressly based it on the assumption that the claimant can check what keywords had been added via the broad match function at this point. In the absence of a Bundesgerichtshof decision on AdWord/trade marks, the OLG Braunschweig allowed an appeal to this decision.

There is little doubt in this Kat’s mind that this particular decision will not hold upon further appeal to the Bundesgerichtshof. The OLG Braunschweig is 'tradtionally' known for being trade mark owner friendly, whereas the Bundesgerichtshof appears to follow a more liberal, advertiser-friendly approach when its comes to keyword advertising basing its decisions on a rather internet savvy consumer (PCB decision). The OLG Braunschweig's decision appears to be based on a more easily confused consumer. This Kat is further not completely convinced by the OLG Braunschweig’s shop assistant analogy: do we really regard search engine triggered ads as the “online version” of a real-life shop assistant pointing us to a specific product? Do we not usually expect to further refine a search result, separating natural search results from ads and sponsored links? As far as this Kat recalls (and please do feel free to correct me if I am wrong), the ECJ in Google France et al did not request a clarification within the ad text itself (like the OLG Braunschweig appears to do here), or discuss the “keyword selection tool” matter in any of its recent AdWords decisions.

Of course, the judges from the OLG Braunschweig will be fully aware of this and one has to admire their spirit in deciding differently. In the absence of a Bundesgerichtshof decision, however, this is decision feels like an invitation for German claimants to do some forum shopping.

Case reference: OLG Braunschweig, 2 U 113/08, of 24 November 2010. The OLG’s case database can be accessed here.

Angry cat praline here.

To read Austrian blogger austrotrabant’s critical review of this decision, particularly with regard to the "shop assistant" analogy, please click here. (Thanks also go to Max aka austrotrabant for sharing the text of the OLG original decision with this grateful Kat)