EU trade mark disputes: Glashütte ORIGINAL

On 11 December, the General Court of the European Union (GCEU) ruled in case T-1163/23 involving the EU trade mark "Glashütte ORIGINAL" owned by the German company Glashütter Uhrenbetrieb.

 

In 2022, the German company applied to the European Union Intellectual Property Office (EUIPO) for registration of the EU trade mark No. 018727034 in respect of goods and services in Classes 9, 35 and 41 of the Nice Classification, such as virtual watches to be used in online virtual reality platforms and pages, and their accessories and related entertainment services.  However, both the examiner and the Board of Appeal rejected the application on the grounds that the mark lacked distinctiveness under Article 7(1)(b) EUTMR. In addition, the Board of Appeal emphasised that, for a significant part of the relevant German public, 'Glashütte ORIGINAL' would evoke the reputation of the town of Glashütte (Germany) in the field of watchmaking. Thus, the mark would be perceived as a logical extension of that reputation,

 

The German company appealed to the General Court, which had to decide whether the mark was indeed devoid of any distinctive character. First, the Court noted that in order to be registered, a trade mark must have distinctive character, which means that it must identify the commercial origin of the goods or services. In this case, the Court considered that the mark "Glashütte ORIGINAL" did not meet this requirement, since it would be perceived by the relevant public as a reference to the quality and authenticity of the goods, rather than as an indication of their commercial origin. This was due to the renowned tradition of high-quality watchmaking in the town of Glashütte.

 

Although the applicant argued that the reputation of Glashütte did not extend to virtual goods, the Court pointed out that the virtual goods and services were directly related to watchmaking and its accessories. Therefore, the relevant public would still associate the mark with the town's reputation for watchmaking, regardless of whether the products were physical or virtual. As a result, the Court upheld the decision of the EUIPO to reject the registration of the mark "Glashütte ORIGINAL".