No Oktoberfest - and no longer without trademark protection

It’s mid-September and no Oktoberfest – already for the second time in a row. Moreover, the Oktoberfest is no longer without trademark protection. The term “Oktoberfest” is protected as an Union trademark for 22 product classes – including tourism advertising.

The Munich Oktoberfest 2021 should have started tomorrow, Saturday, 18 September 2021. But due to the Corona situation, it has to be cancelled for the second time – an remarkable exception not only for Munich residents. Usually, more than 6 million visitors come to the famous Munich Oktoberfest.

This year, however, this coincides with the new trademark protection on the term “Oktoberfest”, which was confirmed by the European Trademark Office (EUIPO) in May 2021 – we reported. For years, the city of Munich had been trying to have the “Oktoberfest” protected as a word mark and thus monopolise almost all economically exploitable segments of goods and services for the name “Oktoberfest” throughout Europe.

However, in the opinion of the German Patent and Trade Mark Office (DPMA), this is a term which needs to be kept free as word pursuant to § 8 (2) No. 2 MarkenG, and it refused to register it as a German trade mark – we reported.

Not so, however, the European Trade Mark Office. Since May 2021, the term “Oktoberfest” has been protected for 22 product classes including tourism advertising – for an initial period of 5 years and for the territory of the European Union.

Oktoberfest goes Dubai

Some event entrepreneurs wanted to take advantage of this and use the term “Oktoberfest goes Dubai” to circumvent the new trademark protection for the Oktoberfest. But so far in vain; the Regional Court of Munich acted quickly and confirmed an application by the City of Munich for an interim injunction against the organisers of “Oktoberfest in Dubai” as early as June 2021 (judgement of 25 June 2021, ref. 17 HKO 7040/21). The LG Munich considered the wording “Oktoberfest goes Dubai” to be misleading to consumers and to be an unfair exploitation of reputation: The advertising inadmissibly transferred the good reputation of the Munich Oktoberfest to an event in Dubai. In addition, the impression could be assumed that the (Munich) Oktoberfest was moving to Dubai.

Therefore, the Munich Regional Court prohibited the campaign “Oktoberfest goes Dubai” and the corresponding advertising.

Wide protection claim of the City of Munich

In any case, the City of Munich has secured comprehensive trademark rights to its famous folk festival. The terms “Oktoberfest”, “Münchner Oktoberfest” and “Oktoberfest München” are protected, as are “Wiesn” and “Oide Wiesn”.

The example of “Wiesn” once again shows the complexity of trademark protection. For example, “Wiesn” has been protected as a European word mark since 2012 – by Segmüller Polstermöbelfabrik GmbH (Germany), for lighting, electrical household appliances, furniture and corresponding advertising.

The City of Munich, however, has trademark claims to “Wiesn” for the important Nice Class 42 and thus primarily for the creation and maintenance of websites; the operation of search engines for the internet; and the provision of storage space on websites on the internet for the advertising of goods and services.