The General Court has upheld the finding that the name Glashütte, a German town famous for its watchmaking history, cannot be registered as a trade mark in relation to virtual timepieces.
Background
In July 2022, Glashütter Uhrenbetrieb GmbH, a well-known German manufacturer of high-end watches and other horological instruments, applied to register their logo as an EU trade mark for a number of virtual goods and services, including watches and clocks for use online or in virtual worlds in Class 9 and related retail and entertainment services in Classes 35 and 41. The EUIPO refused the application holding that, since Glashütte is a German town famous for high-quality watchmaking, and the relevant public perceives virtual watches in the same way that it perceives the corresponding real-world ones, the sign would be viewed as merely promotional, i.e. endowing the virtual goods and services with the same aura of quality and refinement that the real world counterparts originating from that region possess. The decision was confirmed by the Board of Appeal.
Glashütter Uhrenbetrieb appealed to the General Court on the basis that the Board of Appeal had erred in finding that the mark applied for lacked distinctive character in respect of the goods and services applied for. This plea was divided into four parts, namely:
- The city of Glashütte is known as a watchmaking town only by the interested public in Germany and not the public at large. Further, this ‘notoriety’ equated to knowledge that the city was home to a small part of the German watch industry, and not that it was renowned for the quality of its watch products.
- The Board of Appeal had erred in transferring the image of quality represented by the city of Glashütte in the field of traditional watchmaking to the virtual goods and services covered by the mark applied for. The Board of Appeal failed to have regard to the difference between real goods and virtual goods, with the result that a transfer of reputation from the former to the latter should be precluded.
- The Board of Appeal had ignored the distinctive character of the figurative elements and stylisation of the applied for mark which gave the mark distinctive character.
- Glashütter Uhrenbetrieb held an existing EU trade mark, identical to the one applied for, registered for real-world watches in Class 14 and had not received any objections during the registration process. It was further argued that use of the applied for mark by third parties in relation to virtual goods would undermine its rights in that registered mark.
The General Court Decision
The General Court dismissed the appeal in its entirety.
In respect of the first part of the plea, the General Court held that it was a well-known fact, or one which could be learned from generally accessible sources, that Glashütte is a town famous for the manufacture of high-quality watches. It was sufficient that Glashütte symbolised high-quality traditional watchmaking for a non-negligible part of the relevant German public – here both the general public and the professional and specialised public with an interest in virtual goods related to watches, clocks and related goods. The General Court noted that where the EUIPO decides to take account of well-known facts, they are not required to establish, in their decisions, the accuracy of those facts. If Glashütter Uhrenbetrieb had wanted to challenge that well-known fact it should have done so in ‘a detailed manner’. It had failed to submit any evidence challenging this finding.
On the second part of the plea, the General Court upheld the finding that Glashütte's reputation for quality manufacture of real-world watches would be transferred to the virtual world counterparts. The Court held that, for the assessment of the distinctive character of the mark in issue, the relevant public would, in principle, perceive virtual goods and services in the same way as it perceives the corresponding real ones. In this case the virtual goods and services applied for directly mimicked the function and purpose of their real-world counterparts. It stressed, however, that the possibility of such a transfer must be assessed on a case-by-case basis, considering the specific nature of the virtual products and services in question. In this case, the public would directly perceive the applied for mark as a logical extension of the reputation of the city of Glashütte as regards traditional watchmaking to virtual products.
Glashütter Uhrenbetrieb‘s argument regarding the distinctiveness conferred to the applied-for mark by its stylisation was also dismissed. The General Court held that there was nothing particularly striking in the graphic stylisation of the mark applied for to imbue it with distinctive character. The word "Glashütte" written in stylised, handwritten-looking letters and placed above the word "original" did not confer distinctive character on the mark in relation to the word elements, which were in turn devoid of any distinctive character as regards the goods and services covered by the application
Glashütter Uhrenbetrieb could not rely on the potential detriment to its other mark (which covered watches) without implicitly acknowledging the existence of an interaction between the real goods and their virtual equivalents. Each case heard by the EUIPO is decided on its own merits and the existence of a prior registration had no bearing on the present case. Neither the Board of Appeal nor the General Court were bound by the decisions adopted by EUIPO examiners and it would be contrary to their task of review to have jurisdiction reduced to compliance with decisions of bodies of first instance.
Comment
This case has significant implications for the protection of trade marks in the realm of virtual goods. In recognising that the reputation of a geographical location, such as Glashütte for watchmaking, can extend to virtual goods and services that emulate or represent real products, the General Court confirmed that, in certain circumstances, virtual goods can benefit from the same level of trade mark protection as their real-world counterparts.
It remains to be seen whether the General Court may look to expand this decision beyond considerations relating to the absolute grounds of refusal. The EUIPO recently rejected an opposition to a mark on the basis that retail services relating to virtual soaps were dissimilar to their real soap counterparts - see EU Trade Marks: are virtual goods similar to their real-world counterparts? Brands looking safeguard their marks in both physical and digital spaces, and brands expanding into virtual markets, should watch further developments in this field with interest.
For more information or if you have any questions, please contact Emily Roberts, Tedi Halili or another member of the IP team.
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