German Federal Patent Court decides in Neuschwanstein castle trade mark dispute

News in the trade mark dispute surrounding the German castle Neuschwanstein (see the IPKat's report here) .

By way of reminder: the Bavarian Castle Department (which is part of the Bavarian state government)has the task of regulating the souvenir trade connected to the famous Bavarian fairy tale castle and its surrounding area and registered the word mark "Neuschwanstein" in 2005. The German Federal Association Bundesverband Souvenir Geschenke Ehrenpreise e.V. (BSGE) - which describes itself as "a network of producers, wholesalers, exporters, retailers and trade representatives from the souvenir, sports clubs, trophy and festive items (industry)" - objected to this. Arguing that the Bavarian Castle Department's trade mark registration was akin to "censorship" of the Neuschwanstein souvenir trade, the BSGE filed for an invalidity of this mark at the DPMA. The DPMA (see IPKat report here) decided in the BSGE's favour and invalidated the mark, according to media reports, the DPMA found that "Neuschwanstein" was an "often used", non-distinctive term" and thus not capable to indicate trade origin of the goods and services marketed under the sign.

The German Federal Patent Court has now decided this matter and issued a press release confirming that it has upheld the DPMA's decision to cancel the "Neuschwanstein" trade mark. In its press release of 8 February 2011 concerning "Neuschwanstein" (case reference 25 W (pat) 182/09 of 4 February 2011) the court has provided the following information which this Kat has translated and summarised below.

The sign "Neuschwanstein“had been registered as a trade mark in 2005 for a multitude of goods and services. On 20 November 2007 the German Patent and Trademark Office decided on an invalidity application concerning this mark holding that the mark should be invalidated because it fell foul of § 8 (2) No. 1 German Trademarks Act (MarkenG) since it had lacked distinctiveness at the time of registration and still lacked distinctiveness now.

Upon appeal, the 25th Senate of the German Federal Patent Court upheld this decision and, inter alia, decided that the term "Neuschwanstein" described the castle Neuschwanstein which was commissioned by Kind Ludwig II in the municipality of Schwangau in the state of Bavaria with the castle being a world famous landmark of high (cultural-)historical importance.

As regards to services such as "travel services; catering/hospitality services and accommodation services", the term "Neuschwanstein" does not qualify for trade mark registration since the term could be seen as describing the characteristics of the services in the sense of § 8 (2) No. 2 MarkenG, that is their intended purpose or the geographical origin of rendering the services.

Designations of well-known tourist attractions such as "Neuschwanstein" furthermore lack the necessary distinctiveness under § 8 (2) No. 1 MarkenG concerning such goods that are usually offered in the proximity of such tourist destinations as souvenir articles or to satisfy the demands of tourist with regard to foods, drinks or further articles. This equally applies to services that are usually rendered and offered in a close proximity or in the context of such tourist attractions.

The court stressed that the term "Neuschwanstein" not only described a tourist sight but also a building that is a significant part of the national cultural heritage. The judges further held that designations of cultural sights that are of high importance and/or that are part of the national or international world cultural heritage are common property and as such cannot be monopolised or commercialised through trade mark laws. The court added that these sights usually are not distinctive enough for trade mark registration in the sense of § 8 (2) No. 1 MarkenG, even without a factual reference to claimed goods and services

Given that several aspects of this decision have fundamental importance, the Federal Patent Court allowed a further (partial) appeal to the German Federal Supreme Court (Bundesgerichtshof). On balance, this Kat believes that the court got it right but cannot help but thinking that the general idea of wanting to control the souvenir output surrounding the Neuschwanstein castle is not a bad one. How about having some kind of licensing committee when it comes to merchandise of such historical sights. Merpel, who likes her newly bought Neuschwanstein t-shirt (left), disagrees and thinks that this German Kat is nothing but a snob.... why not let the tourists decide what the want to spend their money on, rather than the Bavarian state?

Case reference : Bundespatentgericht, 25 W (pat) 182/09, delivered on 4 February 2011.

The court's press release can be found here.
The decision can already be retrieved in its entirety (German, PDF) by clicking here.

Formula 1 fight for right to race as Nelumbo Nucifera

It may not be F1-friendly, but at least
this vehicle has a tail-gate fit for a Kat

The IPKat, like most other felines, has struggled to master the art of Formula 1 motor-racing, not least because once he's in the driving seat he's never quite sure where to put his tail.  However, he always watches out for intellectual property issues and, if they happen to concern fast cars and life in the fast lane in general, he is always well disposed to comment on it.  Here he reports on a little news item which is hot off the track.

Team Lotus famously raced in Formula 1 events between 1958 and 1994, achieving great success. Financial difficulties followed and the team has not raced since. A dispute has now arisen over the right to return to the grid under the name Team Lotus. The business of making and racing race cars under the name Team Lotus, which the legendary Colin Chapman kick-started in the 1940s, is currently owned by Team Lotus Ventures. The very same Colin Chapman however started another business in the 1950s, manufacturing other cars under the name Lotus. That business is owned by Group Lotus.

All this happened in the days when people were more excited by fast cars than by intellectual property -- but now we can fast-forward to modern times. During the 2010 Formula 1 season, 1Malaysia Racing Team Sdn Bhd entered a team under the name LOTUS RACING, having taken a licence to the right to use the name from Group Lotus. That licence terminated recently amid disputes between the parties. However, 1Malaysia and related companies, having recently acquired Team Lotus Ventures, have now announced their intention to compete as TEAM LOTUS in 2011. Group Lotus denies that they are entitled to do so, challenging the rights that are said to have been acquired from Team Lotus Ventures.

Although details of the claims by either side have not yet been reported, the IPKat notes that Group Lotus is the registered proprietor of a number of trade mark registrations for the word LOTUS and for the roundel (which includes the monogram CABC, the initials of Colin Anthony Bruce Chapman) bearing the word LOTUS. Team Lotus Ventures, on the other hand, owns registrations for TEAM LOTUS and the roundel featuring the words TEAM LOTUS. ...

The IPKat suspects that, just as each Formula 1 season consists of a sequence of competitive races, so too will this litigation consist of a sequence of fiercely-fought actions. But the winner won't be the team with the most podium points; it'll be the team that crosses the line first in the final race.  Merpel says, Chapman's a bit of a tautological name really, since "chap" is another word for "man".

Lotus Cars here; Lotus Racing here; Team Lotus here
Lotus fruit (nelumbo nucifera) here
Men saved from Lotus Eaters here
Lotus recipes here
Lotus position for dummies here

Dispute over "Ceausescu" trade mark

German news sites RP-Online and Stern.de report on a slightly unusual trade mark related dispute in Romania. Valentin Ceausescu the son of former Romanian communist leader Nicolae Ceausescu is suing the Odeon theatre in Bucharest (left) for performing a play on his late parents called "The Last Hours of Ceausescu". Interestingly, Mr Valentin Ceausescu appears to be basing his claim on an infringement of the trade mark "Ceausescu" rather than an infringement of privacy or post-mortal personality rights.

The play in question "The Last Hours of Ceausescu" was created by the International Institute of Political Murder which is based in Berlin and Zurich and describes the last hours in the life of Mr. Ceausescu's parents. It is reported that Mr Ceausescu is suing for nominal damages of 0.25 Euro only as this was a matter of "principle" for him - no one should be allowed to use the name Ceausescu without consent. Foreign theatres, outside of Romania, are not reportedly affected.

It is not quite clear from the report whether a trade mark registration for "Ceausescu" exists but this Kat, while not having found any Ceausescu marks, assumes that there might be a Romanian trade mark registration in place. The reports further quotes Alexandru Ulmeanu, the lawyer acting for the Odeon theatre Bucharest, as saying that he was planning to challenge the "Ceausescu" trade mark. In his view it was an abusive registration which could set an unwanted precedent.

A hearing in this case has been scheduled for 4 November 2010.

Some culinary IP news....

Some culinary IP news....


First from Sweden: Swedish online publication "The Local" reports that Lindahls dairy in Jönköping, Sweden, has paid a 77 year old Greek man the settlement sum of about two million Swedish kronor (about £180.000) after it had transpired that the dairy company had used the Greek gentleman's photograph to advertise its Turkish style yogurt in Sweden for about 8 years without him knowing anything about it. It appears that an advertising agency had used the photo of Minas Karatzoglis without his knowledge or consent.

Minas Karatzoglis, who lives in Greece, was made aware of the use of his image on the yogurt through a friend who lives in Sweden and who had recognised him. Mr Karatzoglis had initially sued the dairy company for a higher sum in damages and had stressed that he was not Turkish, but Greek and also lived in Greece so that the use of his photograph on a Turkish yogurt was clearly misleading. Mr Karatzoglis, we learn from the German paper Stern, will use the settlement sum to supplement his pension and support his children. Stern also reports that Mr Karatzoglis often travels within Greece and visits markets where tourists regularly take photos of him due to his beautiful beard. One of these photos obviously made its way to Sweden. The dairy company is now trying to recover damages from its advertising agency.


In other culinary news, this time from Germany, we learn about a potential trade mark skirmish between fast food giant McDonald's and the guild of butchers (Fleischerinnung) from Nuremberg Germany over the use of the mark "Nürnburger" for fast food burgers with sausages. This delightful story is featured in the online publication version of the Roth-Hilpoltsteiner-Volkszeitung. So,"Nürnburger" is clearly a pun on "Nürnberg", the German name of the city of Nuremberg which is famous for its grilled sausages ("Nürnberger Rostbratwürste"). While McDonald's is using the mark legitmately, the Fleischerinnung has also been using "Original Nürnburger" and "The Original Nürnburger" on sausages and wanted the brand for itself.

Unfortunately for the butchers, Bratwurstfabrik HoWe am Hafen, the sausage manufacturers who are producing the sausage burgers for McDonald's, have acquired the trade mark rights in the mark "Nürnburger" from another sausage giant, Hans Kupfer KG. Hans Kupfer KG had already filed a German trade mark for "Nürnburger" in 2000 (German trade mark No. 30017329 “Nürnburger” of 6 March 2000 covering sausages in class 29) and Bratwurstfabrik HoWe itself has now also filed for a German trade mark for "Nürnburger" (German trade mark application No. 3020100377003 “Nürnburger” covering class 30 and filed on 23 June 2010). Hans Kupfer KG itself also produces Nueremberg sausages after the traditional recipe.

There is also "The Society for the Protection of the Nürnberger Rostbratwürste" (Schutzverband Nürnberger Rostbratwürste) which monitors that the sausages are made in Nueremberg, have the correct size (8 cm) and are made of the correct ingredients to ensure that only legitimate sausages are sold as original Nueremberg sausages. Interestingly, both trade mark owners, Kupfer und HoWe (the one supplying McDonald's with the sausages), are members of this society and so might not be much help for the Fleischerinnung.

So will the brand "Nürnberger Rostbratwürste" be damaged by the use of "Nürnburger" on fast food?

Difficult to tell - but Manfred Seitz, a spokesperson for the Nuremberg Fleischerinnung, who is not happy about the fastfood version of the traditional Nuremberg sausages very much fears that this "unique" brand could be "diluted". Mr Seitz is quoted as saying: "... this is as if you pass off an Opel as a Mercedes". (Opel being the German version of a Vauxhall.) Surely the wurst case possible ...

Apple and Fujitsu in iPad trade mark dispute

Update: a wise blogger recently remarked that realising that someone else has already blogged about the same topic is one of the little quirks of a blogger's life. Not realising it and blogging anyway is another quirk and might explain the duplicity in the IPKat's reporting on the iPad dispute (see here for the Amerikat's take on the same story).

The N.Y. Times reports of a trade mark dispute between Apple and Japanese Fujitsu’s over the mark iPAD (in relation to class 9 goods). This dispute is reminiscent of Apple's trade mark dispute with Cisco, when it first introduced the iPhone several years ago.

While Apple uses the iPAD mark on a type of electronic device, which an uninformed lay person might describe as a type of laptop in the form of overgrown mobile phone (pictured to the right), Fujitsu's iPad (pictured above left) is meant for use in the retail industry, allowing retailers to check prices and inventories and has reportedly been on the market since 2002. A Fujitsu spokesperson is cited with the words "...it’s our understanding that the name is ours,” and Fujitsu appears to have applied for an US trade mark in 2003.

According to the report, Fujitsu's application was blocked by an earlier iPad mark for a handheld computer device (in the name of MAG-TEK, INC, US trade mark No. 3405828, this Kat assumes).

After initially abandoning its US application, Fujitsu decided to "revive" it last summer, one month before Apple filed its iPad application (under the name of a third party). After extending the opposition deadline several times, Apple now appears to have been set a deadline of 28 February 2010 to oppose Fujitsu's application No. 76497338 IPAD, which was published for opposition purposes on 1 September 2009.

While most observers predict that the current dispute will most likely settle, we also learn from the N.Y. Times report that German company Siemens and - perhaps more intriguingly - a Canadian lingerie company called Coconut Grove also own US trade marks for iPad.

A quick check of the USPTO trade mark register (right) reveals numerous IPAD marks in different permutations and that Siemens' mark covers "programmable electrical drives for controlling machine..." in class 9, whereas Coconut Grove's mark covers "pads for use in bras" in class 25.

We should know more once the opposition deadline has passed... in the meantime, Merpel thinks that this story will be helpful publicity for both sides's products.

"McCurry is also an existing Scottish name"...

From Malaysia reaches us the news of the outcome of an "eight year trade mark battle" over the use of the mark "McCurry" for restaurant services between P. Suppiah the owner of an Indian restaurant in Jalan Ipoh, Malaysia and fast food giant McDonald's.

According to a report by Malaysian news site "The Star" McDonald's filed a law suit against Mr. P. Suppiah in 2001 trying to stop him from using the prefix "Mc" because it could cause confusion and could lead consumers to associate his "McCurry Restaurant"restaurant with McDonald’s. The problems appear to have started after Mr. Suppiah re-branded his restaurant as "McCurry"; after it had previously been known under the perhaps less evocative name "Restoran Penang Curry House (KL) Sdn Bhd".

McDonald's reportedly argued that the prefix "Mc" had to be considered as a trade mark and that through the use of the prefix "Mc", in combination with the word "Curry", McCurry Restaurant had misrepresented itself as being associated with McDonald’s. While the first instance court had initially ruled in McDonald’s favour in 2006, the Court of Appeal has now decided in Mr. Suppiah favour.

Artwork from deviantart.com

While the IPKat can see some merit in McDonald's arguments, particularly because Mr. Suppiah's restaurant not only served Indian food but also "common Western dishes like hot dogs" and apparently used the colours yellow and red for his restaurant's get up, the Malaysian Court of Appeal disagreed. Judge Datuk Gopal Sri Ramis is cited as saying that "reasonable persons" would not associate McCurry with the McDonald’s mark. The judge reportedly added that the fact that McCurry Restaurant chose the name ‘McCurry’, could not by itself been interpreted that it sought to obtain an unfair advantage from the usage of the prefix ‘Mc’. The judge further emphasized that McDonald's did not have a monoploy in the prefix Mc:

"... you have to look at the plaintiff's getup or logo as a whole ... it consists of a distinctive golden arched 'M' with the word, McDonald's, against a red background."

[In contrast] "... the defendant's (McCurry) signboard carried the words 'Restoran McCurry' with the lettering in white and grey on a red background with a picture of a chicken giving a double thumbsup and with the wording, 'Malaysian Chicken Curry'."

McDonald’s can file an appeal against the decision in the Malaysian Federal Court. According to a report by the Chicago Tribune, McDonald's is said to be disappointed with the court's ruling, but has so far declined to comment. And so, for the time being, the last word goes to happy Mr. Suppiah who is quoted as saying "McCurry is also an existing Scottish name".