# C_2017006EN.01002403.xml

| 9.1.2017 | EN | Official Journal of the European Union | C 6/24 |
| --- | --- | --- | --- |

9.1.2017

EN

Official Journal of the European Union

C 6/24

---

Appeal brought on 13 September 2016 by Bundesverband Souvenir — Geschenke — Ehrenpreise e.V. against the judgment of the General Court (Third Chamber) of 5 July 2016 in Case T-167/15, Bundesverband Souvenir — Geschenke — Ehrenpreise e.V. v European Union Intellectual Property Office

Bundesverband Souvenir — Geschenke — Ehrenpreise e.V.

European Union Intellectual Property Office

(Case C-488/16 P)

(2017/C 006/32)

Language of the case: German

Parties

Parties

Appellant: Bundesverband Souvenir — Geschenke — Ehrenpreise e.V. (represented by: B. Bittner, Rechtsanwalt)

Appellant:

Other parties to the proceedings: European Union Intellectual Property Office, Freistaat Bayern

Other parties to the proceedings:

Form of order sought

Form of order sought

The appellant claims that the Court should:

| 1. | set aside the judgment of 5 July 2016 in Case T-167/15; |
| --- | --- |

1.

set aside the judgment of 5 July 2016 in Case T-167/15;

| 2. | declare EU trade mark No 010144392 ‘Neuschwanstein’ invalid; |
| --- | --- |

2.

declare EU trade mark No 010144392 ‘Neuschwanstein’ invalid;

| 3. | order EUIPO to pay the costs of the proceedings. |
| --- | --- |

3.

order EUIPO to pay the costs of the proceedings.

Grounds of appeal and main arguments

Grounds of appeal and main arguments

The appellant submits that the judgment under appeal in Case T-167/15 infringes Articles 7(1)(c), 7(1)(b) and 52(1)(b) of Council Regulation (EC) No 207/2009 (1) on the following grounds:

1

| 1. | The General Court disregarded the fact that the designation ‘Neuschwanstein’ is an indication of geographical origin. It states in paragraph 27 of the judgment — in itself contradictorily — that Neuschwanstein Castle is admittedly ‘geographically locatable’ but is not a ‘geographical location’, because the principal function of the location is the preservation of cultural heritage and not the manufacturing or marketing of souvenirs or services. The ‘principal function’ of a geographical location does not, however, play any role in the absolute ground for refusal of the indication of geographical origin. Neuschwanstein Castle is clearly and immutably locatable and is, contrary to the General Court’s view, distinguishable from an ordinary museum that is determined by the exhibits displayed therein, which — unlike Neuschwanstein Castle — may also be relocated.
  The relevant public will not take up the analytical assessment, set out in the judgment under appeal, of the name as meaning ‘the new stone of the swan’, but will associate the fantasy name exclusively with the world-famous castle. Consequently, the judgment under appeal is also at variance with the requirements laid down by the Court of Justice in its Chiemsee judgment, (2) since the relevant public will associate goods bearing the designation ‘Neuschwanstein’ with Neuschwanstein Castle as a world renowned tourist centre. That location is therefore undoubtedly liable to have an impact on consumers’ choices and preferences by reason of its positive connotations. Thus, the sign, as an indication of geographical origin, lacks the capacity to be protected. There is a general interest in keeping the names of famous tourist sights, at least for typical souvenirs that are marketed and purchased in order to remind visitors of the sight concerned, free from monopolisation through trade-mark protection. An analysis of the goods and services in respect of which registration was sought in terms of their suitability as souvenirs was, however, not undertaken in the judgment under appeal. This was, however, necessary, in particular because registration of the mark at issue was sought for headings that also include typical souvenirs. The fact that in this case the Freistaat Bayern is the applicant in no way alters those principles, as the General Court stressed in its Monaco judgment, (3) since the same principles apply to a State qua applicant for registration of a trade mark as to other market participants. |
| --- | --- |

1.

The General Court disregarded the fact that the designation ‘Neuschwanstein’ is an indication of geographical origin. It states in paragraph 27 of the judgment — in itself contradictorily — that Neuschwanstein Castle is admittedly ‘geographically locatable’ but is not a ‘geographical location’, because the principal function of the location is the preservation of cultural heritage and not the manufacturing or marketing of souvenirs or services. The ‘principal function’ of a geographical location does not, however, play any role in the absolute ground for refusal of the indication of geographical origin. Neuschwanstein Castle is clearly and immutably locatable and is, contrary to the General Court’s view, distinguishable from an ordinary museum that is determined by the exhibits displayed therein, which — unlike Neuschwanstein Castle — may also be relocated.

The relevant public will not take up the analytical assessment, set out in the judgment under appeal, of the name as meaning ‘the new stone of the swan’, but will associate the fantasy name exclusively with the world-famous castle. Consequently, the judgment under appeal is also at variance with the requirements laid down by the Court of Justice in its Chiemsee judgment, (2) since the relevant public will associate goods bearing the designation ‘Neuschwanstein’ with Neuschwanstein Castle as a world renowned tourist centre. That location is therefore undoubtedly liable to have an impact on consumers’ choices and preferences by reason of its positive connotations. Thus, the sign, as an indication of geographical origin, lacks the capacity to be protected. There is a general interest in keeping the names of famous tourist sights, at least for typical souvenirs that are marketed and purchased in order to remind visitors of the sight concerned, free from monopolisation through trade-mark protection. An analysis of the goods and services in respect of which registration was sought in terms of their suitability as souvenirs was, however, not undertaken in the judgment under appeal. This was, however, necessary, in particular because registration of the mark at issue was sought for headings that also include typical souvenirs. The fact that in this case the Freistaat Bayern is the applicant in no way alters those principles, as the General Court stressed in its Monaco judgment, (3) since the same principles apply to a State qua applicant for registration of a trade mark as to other market participants.

Chiemsee

2

Monaco

3

qua

| 2. | Contrary to the requirements of the previous case-law, the General Court came to the conclusion, with regard to the ground for refusal relating to the absence of distinctive character under Article 7(1)(b) of Regulation No 207/2009, that the relevant public would recognise that all goods bearing the designation ‘Neuschwanstein’ were manufactured, marketed or supplied under the control of the Freistaat Bayern (see, in this regard, paragraph 43 of the judgment under appeal). However, purchasers of goods that are traditionally offered in close proximity to a tourist sight and that bear its name will not see any reference in that designation to the owner of the sight and will not expect that they are manufactured or marketed by that owner. The designation ‘Neuschwanstein’ serves exclusively to remind them of their visit to the tourist sight and the point of sale. The relevant public is unconcerned as to who the manufacturer may be. |
| --- | --- |

2.

Contrary to the requirements of the previous case-law, the General Court came to the conclusion, with regard to the ground for refusal relating to the absence of distinctive character under Article 7(1)(b) of Regulation No 207/2009, that the relevant public would recognise that all goods bearing the designation ‘Neuschwanstein’ were manufactured, marketed or supplied under the control of the Freistaat Bayern (see, in this regard, paragraph 43 of the judgment under appeal). However, purchasers of goods that are traditionally offered in close proximity to a tourist sight and that bear its name will not see any reference in that designation to the owner of the sight and will not expect that they are manufactured or marketed by that owner. The designation ‘Neuschwanstein’ serves exclusively to remind them of their visit to the tourist sight and the point of sale. The relevant public is unconcerned as to who the manufacturer may be.

| 3. | Bad faith on the part of the applicant for the mark Neuschwanstein under Article 52(1)(b) must be assumed, since it was already well known to the relevant public and demonstrably also to the applicant before the application for registration of the EU trade mark at issue that a variety of goods are offered in the direct vicinity of Neuschwanstein Castle that are labelled with the name of that tourist sight. |
| --- | --- |

3.

Bad faith on the part of the applicant for the mark Neuschwanstein under Article 52(1)(b) must be assumed, since it was already well known to the relevant public and demonstrably also to the applicant before the application for registration of the EU trade mark at issue that a variety of goods are offered in the direct vicinity of Neuschwanstein Castle that are labelled with the name of that tourist sight.

---

(1)  Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

1

(2)  Judgment of 4 May 1999, Windsurfing Chiemsee (C-108/97 and C-109/97, EU:C:1999:230).

2

Windsurfing Chiemsee

(3)  Judgment of 15 January 2015, Marques de l’État de Monaco v OHIM (MONACO) (T-197/13, EU:T:2015:16).

3

Marques de l’État de Monaco

OHIM

---