Just in time with beginning of the Munich Oktoberfest 2019, the German DPMA again rejects the registration of the Oktoberfest trademark. For years, the City of Munich has endeavoured to register the Oktoberfest and the Wiesn as protected trademarks.
The Oktoberfest will begin on 21 October 2019 – more than 6 million visitors came to the world-famous Munich Volksfest at the “Wiesn” in 2018. For years, the City of Munich has therefore been trying to protect the “Oktoberfest” and “Wiesn” as word marks – and thus monopolize almost all economically exploitable goods and services segments for the name “Oktoberfest” throughout Europe.
Oktoberfest trademark – descriptive character?
In the opinion of the German Patent and Trade Mark Office, however, this term is a purely descriptive indication which needs to be kept free as a word pursuant to § 8 (2) No. 2 MarkenG. According to the Süddeutsche Zeitung, the DPMA had already rejected the trademark registration and had rejected it again last Friday, 6 September.
Even as a European trademark, the Oktoberfest is not yet protected. The City of Munich applied for the famous Volksfest as a Union word mark there as early as 2016, but has not yet had any success. “Appeal pending” is noted on the European trademark application, which means that an appeal is currently pending against the Office’s final refusal to register a pending trademark application.
Wiesn trademark is protected several times as EU wordmark
The “Wiesn”, on the other hand, have been protected as a European word mark since 2012 – by German Segmüller Polstermöbelfabrik GmbH for luminaires, electrical household appliances, furniture and corresponding advertising.
The city of Munich has also been able to protect “Wiesn” as a European word mark since December 2015 for other Nice classes and goods as Segmüller. The City of Munich successfully registered the trade mark ‘Wiesn’ for, inter alia, detergents (Class 9); reproduction of images and/or sound, including memory cards (Class 38); internet-related telecommunications networks and databases (Class 39); supply of water, heat and electricity; photographs (Class 30); websites and search engines (Class 42).
The City of Munich is also the proprietor of the protected trade mark “Oide Wiesn” and various breweries and producers of dirndls have registered other European trade marks containing the word element “Wiesn”, such as Wiesnbier, Wiesnkracherl and Wiesn Fashion.
Other cities or regions have also failed to protect famous events or tourist magnets as trademarks, for example the city of St. Andrews in Scotland and the state of Bavaria with the trademark “Südtirol”. However, the state of Bavaria with the “Neuschwanstein” brand was successful with the trademark application.
The legal assessment always focuses on the question of whether the indication in question is a so-called indication requiring to be kept free pursuant to Sec. 8 (2) No. 2 MarkenG. But also the question whether the trade mark applied for is descriptive of the goods and services covered and also the classification of the desired trade mark as a geographical indication of origin has influence over the refusal or confirmation of the trade mark application.
If possible, the City of Munich will probably continue to try to achieve the desired trademark protection for the Oktoberfest.
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