Case Study: Glasshütte Original Trademark Application

Background

On July 1, 2022, the Applicant, Glashütter Uhrenbetrieb GmbH - Glashütte/Sa., filed the figurative trademark application Glasshütte Original before the EUIPO for virtual watch products and their marketing, in classes 9, 35 and 41.

Following the Examiner's rejection of its application, the applicant subsequently lodged an appeal before the EUIPO. The Board of Appeal upheld the decision to refuse protection, considering that the trademark applied for was devoid of distinctive character pursuant to Article 7(1)(b) of the EUTMR. Indeed, for a significant part of the relevant German public, the trademark application would evoke the reputation of excellence of the town of Glashütte in the field of watchmaking.

Consequently, the applicant brought an action before the EU General Court.

Arguments of the Parties

The applicant puts forward the following arguments:

• The reputation of the town of Glashütte for watchmaking is limited to the relevant public in Germany and does not refer to the quality of its watchmaking products. At most, the town is reputed to host a small part of the German watchmaking industry.
• There is a difference between real and virtual products. The applicant alleges that the Board of Appeal arbitrarily transferred the image of quality represented by the town of Glashütte in the field of traditional watchmaking to the virtual products and services covered by the trademark application. Indeed, the town would have no reputation in the field of virtual products.
• The registered sign is highly distinctive, particularly in view of the original design and layout of its letters.
• It is the owner of a figurative EU trademark, identical to the trademark application, which has been registered for goods in class 14, including watches, without objections.

The Genera Court challenges the Applicant's argumentation, stating:

• The town of Glashütte is, contrary to the Applicant's assertion, famous for being the cradle of German watchmaking, but is also renowned for its high-quality products. The Court presents evidence attesting to this reputation and notes that the Applicant itself highlights this fact on its website. In addition, the Court considers that the relevant public is made up of both the general public and the specialized professional public when it comes to goods and services related to watches.
• The reputation of the town of Glashütte does not currently extend to the field of virtual watchmaking, but the public will directly perceive the trademark application as a logical extension of the reputation of the town of Glashütte. The Court justifies its position by stating that the designated virtual goods and services refer to real products that can emulate the functions of the latter.
• The distinctive character of a trademark does not depend on a certain level of creativity or linguistic or artistic imagination on the part of its owner, unless the graphic style employed is likely to impress itself on the memory of the relevant public which will distinguish the origin of the goods and services. In the present case, the General Court considers that the figurative characteristics of the trademark application are banal and do not contribute any distinctive character to the goods and services.
• Neither the Board of Appeal nor the General Court can be bound by the decisions adopted by the EUIPO Examiners, and the Applicant cannot invoke any illegality committed in its favor in order to obtain an identical decision.

Consequently, the General Court rejects the Applicant's arguments in their entirety and upholds the rejection of its trademark application for lack of distinctiveness.

Comments

It is the first time that the General Court rules on the distinctiveness of a trademark for virtual goods. In its decision, the General Court extends the interpretation of the distinctive character of a trademark application to an unrelated category of goods.

By considering that virtual goods must be perceived the same way as real goods, the General Court allows itself a breach of the Nice classification, likely to create legal uncertainty for applicants. Furthermore, in a context of booming growth in the Metaverse and the marketing of virtual goods, this ruling is forcing companies, especially in the luxury goods industry, to rethink their registration strategy in order to prevent any third party from freely using their real creations as virtual goods.

This article first appeared in WTR Daily, part of World Trademark Review, in January 2025. For further information, please go to www.worldtrademarkreview.com.