JUDGMENT OF THE GENERAL COURT (First Chamber)
11 December 2024 (*)
( EU trade mark – Application for EU figurative mark Glashütte ORIGINAL – Absolute ground for refusal – No distinctive character – Article 7(1)(b) of Regulation (EU) 2017/1001 )
In Case T‑1163/23,
Glashütter Uhrenbetrieb GmbH – Glashütte/Sa., established in Glashütte (Germany), represented by D. von Schultz, lawyer,
applicant,
v
European Union Intellectual Property Office (EUIPO), represented by V. Ruzek, acting as Agent,
defendant,
THE GENERAL COURT (First Chamber),
composed of I. Gâlea (Rapporteur), acting as President, T. Tóth and S.L. Kalėda, Judges,
Registrar: R. Ūkelytė, Administrator,
having regard to the written part of the procedure,
further to the hearing on 17 September 2024,
gives the following
Judgment (1)
…
Law
…
The second part of the single plea in law, concerning the extension of the reputation of the town of Glashütte in the field of traditional watchmaking to the virtual goods and services in question
…
37      According to the case-law, although all marks made up of signs or indications that are also used as advertising slogans, indications of quality or incitements to purchase the goods or services covered by those marks convey by definition, to a greater or lesser extent, an objective message, even a simple one, they can still be capable of indicating to the consumer the commercial origin of the goods or services in question. That can be the position, in particular, where those marks are not merely an ordinary advertising message, but possess a certain originality or resonance, require at least some interpretation by the relevant public or set off a cognitive process in the minds of that public (judgments of 21 January 2010, Audi v OHIM, C‑398/08 P, EU:C:2010:29, paragraphs 56 and 57, and of 22 March 2017, Hoffmann v EUIPO (Genius), T‑425/16, not published, EU:T:2017:199, paragraph 28).
38      On the other hand, a sign is not likely to fulfil the essential function of the mark, and is therefore not distinctive within the meaning of Article 7(1)(b) of Regulation (EU) 2017/1001, where the link established between its semantic content and the goods and services in question is sufficiently concrete and direct that it enables those goods and services to be identified immediately by the relevant public (see, to that effect, judgments of 16 May 2013, Restoin v OHIM (EQUIPMENT), T‑356/11, not published, EU:T:2013:253, paragraph 42, and of 27 June 2013, International Engine Intellectual Property Company v OHIM (PURE POWER), T‑248/11, not published, EU:T:2013:333, paragraph 20 and the case-law cited).
39      For a finding that there is no distinctive character, it is sufficient to establish that the mark applied for indicates to the consumer a characteristic of the good or service relating to its market value which, whilst not specific, comes from promotional or advertising information which the relevant public will perceive first and foremost as such, rather than as an indication of the commercial origin of the goods or services (see, to that effect, judgment of 30 June 2021, Ceramica Flaminia v EUIPO – Ceramica Cielo (goclean), T‑290/20, not published, EU:T:2021:405, paragraph 41).
40      In that regard, first, the Board of Appeal correctly found that the name Glashütte would evoke for the relevant public a German town famous for the manufacture of high-quality watches, as is apparent from paragraph 26 above. Secondly, it found, without being challenged by the applicant, that the word ‘original’ evokes the idea of authenticity and faithfulness to the original. Accordingly, the Board of Appeal did not make an error of assessment in finding that the mark applied for as a whole would be perceived by the relevant public as evoking a heritage of exceptional know-how and a reputation for excellence in the watchmaking industry of the town of Glashütte, with the result that the word elements were devoid of distinctive character.
41      As regards, in particular, the assessment of the distinctive character of a mark in relation to virtual goods and services for which registration is sought, it must be held that the relevant public will, in principle, perceive virtual goods and services in the same way as it perceives the corresponding real-world goods and services. The nature of the goods and services in question is therefore decisive. Thus, if virtual goods merely represent real-world goods, or if virtual goods represent or emulate the functions of real-world goods, or if virtual services emulate the functions of real-world services in the virtual world, the relevant public’s perception of the real-world goods and services can, in principle, be transferred to their virtual counterparts. The possibility of such a transfer must nonetheless be assessed on a case-by-case basis, taking into account the specific nature of the virtual goods and services in question.
42      In the present case, it must be borne in mind that the public with regard to whom the Board of Appeal assessed the distinctive character of the mark applied for is limited to members of the German public who know the town of Glashütte, and therefore the reputation of that town for the manufacture of watches, and which understands the meaning of the common term ‘original’. Furthermore, the virtual goods and services in question refer to real-world horological products and their accessories and can therefore represent the corresponding real-world goods and services or emulate their functions. Consequently, when that public is confronted with those virtual goods and services, it will directly perceive the mark applied for as a logical extension of the reputation of the town of Glashütte in traditional watchmaking and that mark will evoke the same positive feelings in that public regarding the quality and authenticity of the virtual goods and services as exist in relation to the quality and authenticity of the real-world goods and services.
43      Consequently, the Board of Appeal did not make an error of assessment in finding that the mark applied for was devoid of any distinctive character, within the meaning of the case-law cited in paragraphs 38 and 39 above, because it would not be likely to be perceived by the relevant public as an indication of the commercial origin of the goods and services in question, but rather as promotional information about the quality and authenticity of those goods and services, conveyed by the reference to the town of Glashütte and its reputation in the field of physical horological products.
44      The applicant’s arguments do not call that finding into question.
45      First, while it is common ground that the reputation of the town of Glashütte in the field of traditional watchmaking does not currently extend to the field of virtual watchmaking, as the applicant submits, the fact remains that the goods and services in question expressly refer to horological products and their accessories.
46      Indeed, as the Board of Appeal rightly pointed out, the goods and services in question consist of virtual goods relating to horological products and their accessories and to the retail sale and provision of these virtual goods. Consequently, the mark applied for will indeed be used in relation to virtual goods and services that may represent the same real-world goods and services for which the name of the town of Glashütte is renowned or emulate the functions of those real-world goods and services.
47      Secondly, the applicant’s argument that the Board of Appeal disregarded the substantial difference between real-world and virtual goods must also be rejected.
48      The Board of Appeal explained that virtual goods referred to non-physical items used in online or virtual environments. It added that those goods could represent real-world goods, represent and emulate the functions of real-world goods or represent objects that have no real-world equivalents.
49      With regard to the applicant’s argument that there is a ‘substantial difference’ between real-world horological products and the virtual goods in question, which are digital files, the applicant does not indicate how that difference would alter the relevant public’s perception, since it has been established that the name Glashütte is well known in the field of traditional watchmaking, that is to say the field of the real-world goods that the virtual goods in question are intended to represent or whose functions they are intended to emulate.
50      Thirdly, the applicant’s argument that there is no overlap between the public interested in real-world watches and that interested in virtual watches and related services must be rejected.
51      Apart from the fact that the applicant does not substantiate the assertion referred to in paragraph 50 above, it does not show how the relevant public, which is interested in traditional watchmaking and is aware of the reputation of the town of Glashütte in that field, is not interested in virtual watchmaking and vice versa.
52      Accordingly, the second part of the single plea in law must be rejected as unfounded.
…
On those grounds,
THE GENERAL COURT (First Chamber)
hereby:
1.      Dismisses the action;
2.      Orders Glashütter Uhrenbetrieb GmbH – Glashütte/Sa. to pay the costs.
Gâlea
Tóth
Kalėda
Delivered in open court in Luxembourg on 11 December 2024.
[Signatures]
*      Language of the case: French.
1      Only the paragraphs of the present judgment which the Court considers it appropriate to publish are reproduced here.