The Cologne Cathedral is not Neuschwanstein

The case law on the protection of geographical names as trade marks started with the CJEU’s Windsurfing Chiemsee judgment (cases C-108/97 and C-109/97). The court held that geographical indications must be free to be used by all, not least because they may be an indication of the quality and other characteristics of the goods concerned, and may also, in various ways, influence consumer tastes by, for instance, associating the goods with a place that may give rise to a favourable response. The absolute ground of refusal of descriptive trade marks (now Art. 7(1)(c) EUTMR) does not, in principle, preclude the registration of geographical names which are unknown, unknown as the designation of a geographical location, or where it is unlikely that people believe that the goods originate from that place or where designed or conceived there.

Other noteworthy decisions concerned the trade mark ‘NEUSCHWANSTEIN’.

While the EUIPO and the EU instances considered it to be distinctive and non-descriptive, which was confirmed by the CJEU (case C-488/16 P), a few years earlier the German Patent and Trade Mark Office refused registration of a national trade mark for partially identical goods as non-distinctive, which was confirmed by the German Supreme Court (case I ZB 13/11).

The latter court recently confirmed that the trade mark ‘KÖLNER DOM’ (meaning ‘Cologne Cathedral’ and referring to probably the most famous cathedral in Germany) is non-distinctive for various goods and services (case I ZB 28/23).

Background

On 18 October 2018, the applicant (Hohe Domkirche zu Köln) applied for registration of German trade mark no. 302018111639 for the sign ‘KÖLNER DOM’.

It was filed for many goods and services in classes 14, 16, 25 and 35, including jewellery, coins, stationery, greeting cards, paperweights, stamps, clothing and retail services for a broad range of goods such as cosmetics, stationery and foodstuff.

The German Patent and Trademark Office rejected the application for most of the goods and services due to lack of distinctiveness. The appeal to the German Patent Court was unsuccessful. The applicant appealed to the German Supreme Court.

The German Supreme Court’s decision

The Court dismissed the appeal.

The judges confirmed that the sign consists of an adjective indicating a place (‘KÖLNER’, i.e. ‘Cologne’) and a building (‘DOM’, i.e. ‘Cathedral’), which are combined in a linguistically correct manner to designate a large church in Cologne. ‘Kölner Dom’ is the name of the cathedral of the Archdiocese of Cologne, a world-famous church building, which was classified by UNESCO in 1996 as a European masterpiece of Gothic architecture and declared a World Heritage Site. The Kölner Dom is known as a church, cultural monument and tourist attraction.

Goods typically sold as souvenirs, with content or having motifs

As regards most of the goods in class 16, the trade mark was found to be descriptive for such goods that can show pictures of the Cologne Cathedral or whose subject matter could be this building, religious buildings in general or tourist attractions. Consumers would understand the term ‘KÖLNER DOM’ merely as an indication of the topic or subject of the goods but not as their commercial origin.

With respect to goods in classes 14 and 16 that can take the shape of the Cologne Cathedral (such as jewellery, paperweights and stamps), the use of ‘KÖLNER DOM’ would be perceived as a descriptive indication but not as a trade mark.

The sign also lacked distinctiveness for goods in classes 14, 16 and 25 that are usually sold as souvenirs, e.g. key rings, watches, jewellery and umbrellas. Famous buildings and tourist attractions are frequently used as decorations and motifs and the goods in question are products, which often have decoration or a motif. The public perceives such goods with the designation ‘KÖLNER DOM’ as memorabilia and not as an indication of the manufacturer. Further, there are several souvenir shops surrounding the Cologne Cathedral that have no connection to the applicant. Therefore, the sign would not be understood as an indication of the commercial origin but only as a reference to the building.

The Court distinguished the case from the CJEU’s ‘NEUSCHWANSTEIN’ judgment. The latter found that Art. 7(1)(c) EUTMR (dealing with descriptive trade marks) did not prevent the registration of ‘NEUSCHWANSTEIN’ for various goods (including jewellery, glassware and clothing). Even though the goods may be perceived as souvenirs when the word ‘NEUSCHWANSTEIN’ is affixed, an article being a souvenir is not an objective characteristic inherent in the nature of the product. The function of an article as a souvenir is determined by the free will of the buyer. Therefore, the term ‘NEUSCHWANSTEIN’ does not relate to an essential characteristic of the goods.

The German Supreme Court considered these findings to be irrelevant because they concerned the question of descriptiveness (i.e. Art. 7(1)(c) EUTMR and § 8(2) no. 2 German Trade Mark Act respectively) but not distinctiveness (i.e. Art. 7(1)(b) EUTMR and § 8(2) no. 1 German Trade Mark Act respectively), which the Court had to assess.

To the extent that the CJEU dealt with the distinctiveness of ‘NEUSCHWANSTEIN’, it did not review the appropriateness of the General Court’s finding on the distinctive character of the trade mark. The CJEU only reviewed whether the General Court had provided adequate statement of reasons for the latter’s assessment of the distinctive character.

Goods not typically sold as souvenirs

The Court also confirmed the German Patent Court’s finding that ‘KÖLNER DOM’ lacks distinctiveness for goods that are not typical souvenirs, such as ‘baby diapers made of paper or cellulose; soccer shoes; sports shoes; hiking shoes; studs for football shoes’.

These goods are often sold with motifs that are either decorative or convey a message to the public. Consumers would believe that ‘KÖLNER DOM’ merely has a decorative function or communicates a message.

Use in a particular way

By reference to the CJEU’s Deutsches Patent- und Markenamt (#darferdas?) judgment (case C-541/18; IPKat here), the applicant argued that the German Patent Court did not assess all likely types of use of the trade mark.

The German Supreme Court held that it is sufficient if one of the likely types of use can be perceived as distinctive. However, even the use of a sign on the goods, their packaging or labels does not necessarily mean that it is understood as an indication of the commercial origin. The relevant public’s perception of a sign can vary depending on the type of the sign and the goods at issue. According to the findings of the German Patent Court, to which the German Supreme Court did not object, ‘KÖLNER DOM’ will always be perceived in the sense of denoting a souvenir, a decoration or motif, regardless of its particular use on the goods, their packaging or a label.

Retail and wholesale services

‘KÖLNER DOM’ will only be perceived as a reference to the building and location when used for retail or wholesale services for consumer products. The sign will either be understood as an indication that the goods subject to the services are souvenirs, an indication of the theme of the goods or the place where the services are rendered (namely near the Cologne Cathedral).

No reference for preliminary ruling

The Court did not consider a preliminary ruling of the CJEU to be warranted. Although the CJEU and the German Supreme Court reached different conclusions regarding the trade mark ‘NEUSCHWANSTEIN’, the differences are justified, according to the judges, because both courts only reviewed legal questions and were bound by the factual findings of the lower courts/trade mark offices. The factual findings (namely the perception of the relevant public) were different, which warranted different outcomes despite applying the same legal principles.

Comment

The EUIPO also partially rejected the EU trade mark application ‘KÖLNER DOM’ (no. 017966576) for similar reasons on the basis of descriptiveness (Art. 7(1)(c) EUTMR), which the Board of Appeal largely confirmed (here).

Intuitively, the decisions make sense. Yet, I am not fully convinced of the reasoning and even the result.

First, the reasoning of the German Supreme Court concerning the decoration or motif appears to apply to figurative marks (e.g. a picture or the silhouette of the Cologne Cathedral). A word mark can hardly be described as decoration or a motif.

Second, what is the connection between the words ‘KÖLNER DOM’ and baby diapers or sports shoes? What ‘message to the public’ does this convey on diapers or shoes or what kind of decoration or motif would that word mark be?

Third, even if the first thing that comes to mind when hearing or seeing the word ‘KÖLNER DOM’ is the cathedral, it does not have a direct connection with the goods or services. The average consumer does not expect goods to be produced or sold in a cathedral. The fact that a trade mark might be – even primarily – understood as a promotional formula, does not mean that it cannot be perceived as an indication of origin (CJEU, Smart Technologies v OHIM, C-311/11 P, at para. 30). Similarly, the immediate recollection of the Cologne Cathedral does not necessarily prevent it from also indicating the commercial origin.

Considering that the names of several other famous European buildings are registered as trade marks (e.g. VERSAILLE, NOTRE DAME, and EIFFEL TOWER), a reference to the CJEU would have been expedient for the consistency and development of EU trade mark law and its application.


The first picture is by derwiki, the second picture is by 46173, both used under the licensing terms of pixabay.com.