European trade mark "Oktoberfest": application for registration partially rejected
The decision issued on 26.08.2020 by the
Court of Appeal in case no. R1840/2019-4 partially rejected the application for
registration of the word mark "OKTOBERFEST" appleid by the City of
Munich in June 2016, as a European Union trademark (EUTM).
In particular, the City of Munich applied
for registration in 27 different Nice Classes, seeking to obtain the exclusive
right to use this mark for a large number of goods and services, and also
becoming the sole owner of the right to license this mark to anyone who wanted
to use it, for example to organise a party. This application for registration
has raised many objections from several third parties, not only German but also
Austrian, in fact the famous beer festival, known as "Oktoberfest",
takes place in many German cities, but also in several other EU countries.
According to constant jurisprudence, a
trademark has a distinctive character when it is able to identify the product
or service for which registration is applied for as originating from a specific
company, a unique and different sign compared to competing trademarks that
distinguishes it in the eyes of the relevant public.
On the basis of this rule, the examiner,
in application of Art. 7 (1) (b) and (c) EUTMR, in conjunction with Art. 7 (2) EUTMR,
had issued a decision to refuse registration of the mark for the most categories
of goods and services indicated by the applicant in twenty-five different Nice
classes, as it considered "Oktoberfest" descriptive in those
categories (designates a festival, in particular a folk festival, held in the
autumn) for a number of goods and services having to do with festivals (e.g.
Class 41, supply of food and drink, food and drink as goods). It has therefore
considered the registration valid only for 5 of the Nice Classes indicated by
the applicant, for a limited group of goods and services.
The City of Munich has not hesitated to
appeal against this decision of the office, obtaining, in the decision
indicated in the inscription, a partial reform of the decision taken by the
examiner and an extension of protection for some of the goods and services for
which it had applied, thus obtaining consent for 19 Nizza Classes.
Will the City of Munich be satisfied with this result
or will it appeal to the higher court to obtain recognition in the other
classes as well?