Each year, more than 1.3m people visit King Ludwig II’s Gothic Revival retreat that inspired Disneyland’s Sleeping Beauty Castle. So registering its “Neuschwanstein” monicker as a trade mark seemed a no-brainer to the Bavarian Castle Department. But German souvenir makers were not impressed as Tom Harding reports.
Who: Bundespatentgericht, 25 W (pat) 182/09 of 4 February 2011
When: 4 February 2011
Where: German Patent and Trademark Office
Law stated as at: 28 February 2011
The Neuschwanstein castle in Germany is one of its most famous, and reputedly the inspiration for Disney's Sleeping Beauty Castle. In order to protect the castle's integrity therefore, the Bavarian Castle Department ("BCD") regulates the souvenirs and merchandise associated with the castle and its surrounding area. In pursuit of this role, it registered the trade mark 'Neuschwanstein' in various classes of goods and services in 2005.
The German Federal Association of Benudesverband Souvenir Geschenke Ehrenpreise e.V ("BSGE") is a network of participants in (amongst other things) the souvenir industry. It objected to the BCD's registration of the mark on the basis that it effectively amounted to 'censorship' of the trade in Neuschwanstein souvenirs. The BSGE contended that having to seek a licence to produce goods and services from the BCD was not right as the castle was a national monument, and not a brand. It therefore filed for invalidity of the mark with the German Patent and Trademark Office ("GPTO"). The GPTO found in BSGE's favour in 2007. Its reasons for doing so included that the mark 'Neuschwanstein' was in fact an 'often used' term which was 'non-distinctive', and did not therefore qualify for registration.
The BCD appealed the decision, but it was upheld by the 25th Senate of the German Federal Patent Court. The court's cited reasons for its decision included that the mark lacked the necessary required distinctiveness, and could be seen as only describing the characteristics of the goods and services (and did not therefore indicate their origin). It also stressed that ' Neuschwanstein' described both a tourist sight and a building that was of great significance to Germany's cultural heritage. It reasoned that as these cultural sights are part of national heritage, they should not be monopolised or commercialised through trademark law.
In light of the significance of the issues at hand however, a further (partial) appeal has been allowed to the German Federal Supreme Court, so the issue may yet develop further.
Why this matters:
On balance it seems that the decision is right in this case, as it is perhaps unfair for a 'commonly owned' building to be restricted in how it is commercialised by one brand owner. However, as the castle's commercialisation is inevitable considering its popularity, one can also understand the BCD's desire to police how that commercialisation takes place (and it is hard to see how to do that without trade mark protection).
The decision of course also throws up the issue that any other marks registered in respect of nationally significant buildings may now also be open to challenge, so any relevant brand owners beware. However, the ruling is still subject to the outstanding appeal, so we will report on that as and when it happens.