Professional Documents
Culture Documents
Winnetou Ruling
Winnetou Ruling
Winnetou Ruling
DECISION
S. Martin (Rapporteur)
and
Decision
Summary of the facts
1
By an application filed on 14 June 2002, Karl May Verwaltungs- und VertriebsGmbH (the trade mark proprietor) sought to register the word mark
WINNETOU
as a Community trade mark (the contested trade mark). The Community trade
mark covers the following goods and services:
Class 3 Perfumery, essential oils, cosmetics, hair lotions.
Class 9 Films, in particular animated films, video films; photographic, cinematographic, optical,
weighing, signalling, checking (supervision) and teaching apparatus and equipment, electric
apparatus and instruments (included in class 9); apparatus for recording, transmission or
reproduction of sound, images or data, and data carriers therefor, recorded and unrecorded;
magnetic data carriers, recording discs, calculating machines, data processing equipment,
computers, computer programs, exposed films, including for cinematographic purposes.
Class 14 Precious metals and their alloys and goods of precious metals or coated therewith
(included in class 14); nutcrackers of precious metal; jewellery, precious stones; imitation
jewellery, ornamental novelty badges; horological and chronometric instruments.
Class 16 Paper, cardboard and goods made from these materials (included in class 16); stickers,
labels; printed matter; postage stamps; bookbinding material; photographs; stationery; adhesives
for stationery or household purposes; artists materials; paint brushes; office requisites (other than
furniture); instructional and teaching material (except apparatus); plastic materials for packaging
(included in class 16); printers type; printing blocks.
Class 18 Goods made of leather and imitations of leather, namely bags and other containers not
specifically designed for the objects being carried, and small leather goods, in particular purses,
pocket wallets, key wallets and other goods made thereof (included in class 18); trunks and
travelling bags; umbrellas, parasols and walking sticks.
Class 21 Household or kitchen containers (not of precious metal or coated therewith); utensils
(included in class 21); combs and sponges; brushes (except paint brushes); brush-making
materials; articles for cleaning purposes; articles made of glass, porcelain and earthenware for
household and kitchen purposes, works of art made of glass, porcelain and earthenware.
Class 24 Textiles and textile goods (included in class 24, other than for bedding, namely
cushions, blankets, quilts and sleeping bags); bed and table covers.
Class 25 Clothing, footwear, headgear.
Class 28 Games, playing cards, toys, including electronic toys, decorations for Christmas trees;
gymnastic and sporting articles (included in class 28).
Class 29 Meat, fish, poultry and game, and goods made thereof; preserved, dried and cooked
fruits and vegetables; jellies, jams, fruit sauces.
Class 30 Coffee, tea, cocoa, bread, pastry and confectionery, in particular gingerbread, fruit
bread, ices, honey; spices, confectionery and chocolate goods.
Class 39 Transport of persons.
5
Class 41 Events for entertainment, cultural and sporting purposes, rental of films and sound
recordings; film production and film showings; photography; entertainment; events in leisure
parks and holiday parks; holiday camp services; providing campground facilities.
Class 42 Exploitation of industrial property rights.
Class 43 Accommodation and catering for guests.
The contested trade mark was published in Community Trade Marks Bulletin
No 30/2003 of 7 April 2003, registered on 16 September 2003 and extended on
10 June 2012.
The goods and services, up to those in class 42, are aimed at the average
consumer. The services of class 42 are aimed at traders. Depending on the
nature of the goods or services, the level of attention paid by consumers is
high or average. As WINNETOU cannot be assigned to any language
within the European Union, account must be taken of the entire public within
the European Union.
The assessment of the trade mark by courts in Germany is not decisive, since
the Office is not bound by this.
The applicant has not submitted any documents showing that trade circles in
Germany understand the trade mark as being descriptive. The parties agree
that WINNETOU is a fictional person.
The applicant is of the opinion that the fictional person may constitute the
content of the claimed media products, such as books or sound carriers for
example, and thus directly describes the content of the media. However,
according to the practice of the Office, names are distinctive per se.
The ground for invalidity under Article 7(1)(c) CTMR cited in the applicants
counterplea is not taken into consideration. Grounds for invalidity cannot be
broadened in the course of proceedings. Finally, the examination practice
does not, however, reveal any differences between the grounds for refusal
under Article 7(1)(b) and (c) CTMR.
The appeal was remitted to the Board of Appeal pursuant to Article 62 CTMR
after revision was refused by the Cancellation Division.
A Wikipedia extract and an extract from the online newspaper ZEIT are also
attached as evidence of the publics understanding.
The trade mark proprietor essentially submitted the following observations in this
respect:
The appellant has not submitted any evidence that the term WINNETOU is
understood in Germany in a descriptive manner. The judgments of the BGH
and BPatG do not properly reflect the Germany publics actual
understanding.
The documents now submitted by the applicant are late. Regardless of this,
those documents merely show that WINNETOU is a fictional person (like
James Bond or Harry Potter). The alleged development away from a
personal name or from a fictional person towards a generally descriptive
factual indication is not sufficiently substantiated by the applicant.
Reasons
10 The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It
is therefore admissible.
11 It is partly well founded. The sign WINNETOU is distinctive and not
descriptive within the meaning of Article 7(1)(b) and (c) CTMR in respect of
goods and services which are not connected to a noble Native American
chieftain or the book character of the same name. However, with regard to the
goods which have a connection to WINNETOU, in particular those goods in the
field of literature, radio and television, the contested trade mark is certainly to be
cancelled under Article 52(1)(a) CTMR in conjunction with Article 7(1)(b)
and (c) CTMR.
Scope of the cancellation request
12 Firstly, the scope of the cancellation request must be determined.
13 In this regard, the Cancellation Division stated: The ground for invalidity under
Article 7(1)(c) CTMR cited in the applicants counterplea is not taken into
consideration. [...] However, the grounds for invalidity cannot be broadened
10
The assessment by the German Federal Patent Court rightly refers not only to
the goods in suit, namely printed matter, but also to the services in question.
The reason for this is that the descriptive conceptual content of the name
Winnetou relates not only to the works as such, but equally to the services by
means of which the works are produced too. This is because the public will
understand the slogan-like meaningful content inherent in the book character
Winnetou as a generally understandable description of the content of the
production and, without further consideration, will relate to the services
themselves for which the trade mark was registered (emphasis added).
26 As a result, the German Courts assume that the name of a book character is then
at least directly descriptive of the content of publications, and thus connected
goods and services, if the character is familiar and has developed into a term for a
specific character.
27 Although, as the Cancellation Division correctly states, the Board is not bound by
the case-law of national courts, since, in this case, a higher national court has
ruled on the matter that the term is descriptive in Germany, the Community trade
mark must also be assessed as ineligible for protection under Article 7(2) CTMR
in respect of goods and services connected to books, radio and television.
28 For the German public, Winnetou directly refers to the content of the goods in
respect of the following goods:
Class 9 Films, in particular animated films, video films; magnetic data carriers, recording discs,
exposed films, including for cinematographic purposes.
Class 16 Printed matter; bookbinding material; photographs.
31 In this respect, the consumer will assume that WINNETOU films are produced,
WINNETOU leisure parks are concerned, WINNETOU industrial property
rights are exploited etc.
32 For merchandising products too, the consumer will assume that WINNETOU
merely describes the fact that the products are simply connected to the films or
the book character. Nowadays, merchandising products are common in all
conceivable fields (cf., in detail, decision of 30 June 2008, R 1469/2005-1,
WORLD CUP GERMANY, para. 39 et seq.).
33 Thus the following goods are wholly typical merchandising products:
11
Class 14 Precious metals and their alloys and goods of precious metals or coated therewith
(included in class 14); jewellery, precious stones; imitation jewellery, ornamental novelty badges;
horological and chronometric instruments.
Class 16 Paper, cardboard and goods made from these materials (included in class 16); stickers,
labels; postage stamps; stationery.
Class 18 Goods made of leather and imitations of leather, namely bags and other containers not
specifically designed for the objects being carried, and small leather goods, in particular purses,
pocket wallets, key wallets and other goods made thereof (included in class 18); trunks and
travelling bags; umbrellas, parasols and walking sticks.
Class 21 Articles made of glass, porcelain and earthenware for household and kitchen purposes,
works of art made of glass, porcelain and earthenware.
Class 24 Textiles and textile goods (included in class 24, other than for bedding, namely
cushions, blankets, quilts and sleeping bags); bed and table covers.
Class 25 Clothing, footwear, headgear.
Class 28 Games, playing cards, toys, including electronic toys, decorations for Christmas trees;
gymnastic and sporting articles (included in class 28).
34 They are typically sold in souvenir shops, for example WINNETOU clothing,
i.e. clothing that Winnetou wears or is connected to Winnetou; or WINNETOU
umbrellas, cups, toys (such as bow and arrows), table covers in the Native
American style, cases with the image of Winnetou, etc.
35 In addition, it is also conceivable for WINNETOU perfumery, essential oils,
cosmetics, hair lotions to be offered for sale as merchandising products.
36 The same applies for calculating machines, data processing equipment,
computers and computer programs. These too may indeed be offered for sale as
merchandising products, for example a souvenir pocket calculator or a
WINNETOU hand-held computer having corresponding games. Photographic,
cinematographic, optical, weighing, signalling and checking (supervision)
apparatus and equipment, electric apparatus and instruments (included in class 9);
apparatus for recording, transmission or reproduction of sound, images or data,
and data carriers therefor, recorded and unrecorded may also be sold as
merchandising articles. For example, it is quite conceivable for disposable
cameras or video cameras to be sold at film festivals for recording the festivals.
37 Finally, specifically at Christmas time, it is possible for WINNETOU
nutcrackers of precious metal to be sold as merchandising articles. The
consumer will assume that the nutcracker is in the shape of a Native American
chieftain. Household or kitchen containers (not of precious metal or coated
therewith); utensils (included in class 21); combs and sponges; brushes (except
paint brushes); brush-making materials; articles for cleaning purposes in class 21
may also be sold as merchandising articles, for example wooden bowls.
38 Office requisites (other than furniture); plastic materials for packaging (included
in class 16); adhesives for stationery or household purposes; artists materials;
paint brushes in class 16 also represent possible merchandising articles, for
example souvenir writing pads or hole punches, brushes etc.
12
13
51 However, in respect of the aforesaid goods, which are in no way connected to the
Winnetou series of books and films, the trade mark is devoid of the required
connection, namely for printers type; printing blocks in class 16.
52 The consumers in the union who do not know Winnetou will, as shown, see this
as a distinctive fanciful designation anyway.
53 Consequently, registration is precluded by grounds for refusal within the meaning
of Article 52(1)(a) CTMR in conjunction with Article 7(1)(b) CTMR.
Conclusion
54 The appeal is successful in part since grounds for refusal exist within the meaning
of Article 52(1)(a) CTMR in conjunction with Article 7(1)(b) and (c) CTMR in
conjunction with Article 7(2) CTMR with regard to all of the goods and services
except printers type; printing blocks in class 16.
55 In respect of all the claimed goods and services except printers type; printing
blocks in class 16, the contested decision must therefore be annulled and the
contested Community trade mark cancelled. In respect of printers type; printing
blocks in class 16, however, the appeal must be dismissed and the Community
trade mark remains registered.
Costs
56 Since the applicant was partly successful in its appeal, for reasons of equity
within the meaning of Article 85(2) CTMR, each party shall bear its own costs in
the appeal proceedings and in the cancellation proceedings. The decision on costs
in the contested decision is annulled.
14
Order
On those grounds,
THE BOARD
hereby:
1
Annuls the contested decision with respect to all of the claimed goods
and services and cancels Community trade mark No 2 735 017 to this
extent except for printers type; printing blocks in class 16.
Orders each party to bear its own costs in the appeal and cancellation
proceedings.
Th. M. Margellos
S. Martin
Registrar: