Cabinet Beau de Loménie
Is the name "NEUSCHWANSTEIN" an indication of geographical origin?
The name of this famous castle, which Ludwig II of Bavaria designed and built, and in which he was arrested on the tenth of June 1886, belongs to the Free State of Bavaria, which has filed it as a European trademark in many classes of goods and services (3, 8, 14-16, 18, 21, 25, 28, 30, 32-6, 38 and 44). This mark was accepted for registration by the EUIPO. A third party having contested its validity, the question arose as to whether such a name was descriptive of the geographical origin of the goods and services of everyday consumption claimed in the application.
In view of the refusal of the EUIPO authorities to cancel this mark, confirmed by the Court of First Instance of the European Union, the applicant brought the case before the Court of Justice of the European Union (CJEU) .
In a judgment dated 6 September 2018 (C-488/16), the CJEU has confirmed these previous decisions (T-167/15 and R 28/2014). Thus, according to the Court, this trademark is not an indication of the geographical origin of the goods and services it covers, since the place it designates is not that of the production of the goods or the provision of the services designated.
The Court states that the fact that the products concerned, namely products for everyday consumption, are assimilated to keepsakes because of the affixing of the name of the castle, does not make that name an essential and descriptive characteristic of those products (paragraphs 45 and 46).
Moreover, the mere fact that these products and services are offered in a given place, in this case the NEUSCHWANSTEIN Castle, cannot as such mean that the name of that place designates characteristics, qualities or particularities specific to and linked to the geographical origin of those products and services (crafts, tradition or climate).
Indeed NEUSCHWANSTEIN Castle is known, not for keepsakes, but for its architectural singularity and, in fact, this place of marketing cannot be considered as a description of an essential quality or characteristic in the eyes of the relevant public, knowing, moreover, that these souvenirs are also sold beyond the surroundings of the castle (paragraphs 51 and 52).
NEUSCHWANSTEIN is thus a fancy name that allows the relevant public, through its affixing, to distinguish the designated goods and services from those sold or provided in other tourist or commercial areas (paragraph 69).
The applicant, who claimed previous use of the same name, also alleged, in support of his claim in invalidity of the trade mark NEUCHWANSTEIN, the applicant's bad faith, at the time of filing, which is a cause of absolute invalidity. He thus blamed the Court for having rejected this request when the Free State of Bavaria was aware of his use at the time of filing. The Court of First Instance had eventually considered that the applicant had pursued a legitimate objective of conserving and preserving a museum site.
The CJEU notes in this regard that the applicant has made an incorrect analysis of the Lindt case (C-529/07) in his arguments. In that case, the Court had precisely decided that an applicant, who makes a filing, knowing of the marketing by a third party of an identical or similar sign, could nevertheless pursue a legitimate objective (paragraph 83). It will be recalled that Lindt had undertaken the filing in question to counter a third party, a recent player on the market, who was copying his presentation.