The Oktoberfest is fair game

The Oktoberfest in Munich is not just the world’s largest festival: its name has also become very popular in other countries. There are Bavarian-themed festivals around the world named ‘Oktoberfest’. As a consequence of this development, the term has become descriptive for such festivals and related goods and services. The Board of Appeal (‘BoA’) of the European Union Intellectual Property Office (‘EUIPO’) confirmed the rejection of the word mark ‘Oktoberfest’ for services in class 43 (R1840/2019-4). This also has consequences for the assessment of conflicts between trade marks containing the word ‘Oktoberfest’ as a recent decision of the BoA shows.

Background

On 12 August 2022, the Landeshauptstadt München (‘City of Munich’) filed for registration of EU trade mark no. 018746723

covering, inter alia, the following services in class 41:

“Provision of food and drink; Restaurants; Catering services; Hotel services; Lodging and boarding services; Hotel and temporary accommodation reservations”.

FCRB IMPEX SRL (‘FCRB’) filed an opposition based on the Romanian national trade mark no. 100545 for the following sign:

It was registered in 2009 for “food services, restaurants and catering, fast food outlets; temporary accommodation services, bars, pubs and clubs” in class 43.

The EUIPO’s Opposition Division denied a likelihood of confusion (Art. 8(1)(b) EUTMR) and rejected the opposition.

FCRB appealed.

The Board of Appeal’s decision

The EUIPO’s Board of Appeal (‘BoA’) dismissed the appeal (case R1264/2024-2).

Although the City of Munich requested FCRB to establish genuine use of the earlier mark, the BoA assumed that genuine use had been proved for all services.

On that basis, the services were found to be identical.

The relevant public was considered to be the Romanian general public.

Similarity of the signs

In the assessment of the similarity of the signs, the Board found that the verbal elements ‘OKTOBER FEST’ and ‘Oktoberfest’, respectively, would be understood by the relevant public as referring to the traditional annual autumn (beer) festival in Munich.

The term also referred to any similar autumn festival because nowadays, the festival is highly exploited commercially and referenced by its original name. Moreover, Oktoberfest festivals are also organised at a local level outside Germany. Consequently, consumers in Romania were considered to be also familiar with the concept and use of the words ‘OKTOBER FEST’ and ‘Oktoberfest’. As a consequence, the verbal elements in the conflicting signs were found to have at best a very low distinctiveness for the services related to the provision of food and drinks.

Further, the words ‘PUB’ and ‘MUNCHEN’ would also be understood by the Romanian public as descriptive and devoid of distinctive character.

The picture of a beer mug with wings was deemed to be distinctive overall despite the allusive nature of the element. The ‘flying beer mug’ would also attract the consumer’s attention because of its size and central position. Therefore, it was found to dominate the overall impression.

The figurative element in the contested application was considered to be of average distinctive character. It could be perceived as a highly stylized letter ‘O’.

Considering that the trade marks only coincided in the non-distinctive element ‘OKTOBER FEST’/’Oktoberfest’ and the fact that both signs contained additional and more distinctive elements, the BoA held that the signs were visually similar to a low degree.

Likewise, the coincidence in the word ‘OKTOBER FEST’/’Oktoberfest’ only led to an at most low degree of phonetic similarity. The words ‘PUB’ and ‘MUNCHEN’ are obviously completely different.

Conceptually, the word ‘OKTOBER FEST’/’Oktoberfest’ would evoke a concept but it was not deemed sufficient to establish a relevant conceptual similarity because this element was afforded at best a low degree of distinctiveness. Further, the public’s attention would be attracted by the signs’ additional elements that convey different concepts capable of differentiating the marks to a certain extent. It followed that the conceptual similarity was at most low.

Distinctiveness of the earlier mark

FCRB claimed that the earlier mark enjoyed an increased degree of distinctiveness due to intensive use. The Oktoberfest Pub, FCRB claimed, was a landmark location in Bucharest (Romania).

The Board recalled that the EUIPO must examine the inherent distinctiveness of the earlier mark of its own motion. However, the enhanced distinctive character of the earlier mark constitutes a matter of fact, which is for the parties to present by means of solid and objective evidence.

The existence of a higher-than-normal level of distinctiveness as a result of the public’s recognition of a mark presupposes that at least a significant part of the relevant public is familiar with it, but not necessarily that it has a reputation within the meaning of Art. 8(5) EUTMR.

The evidence submitted by FCRB referred to the words ‘Oktoberfest Pub’ as the name of a bar in Bucharest only and did not depict the figurative element of a flying beer mug. Copies of invoices, contracts with third parties, balance sheets, financial statements and collaboration agreements with third parties did not reproduce the earlier mark.

The evidence was deemed insufficient to conclude whether a significant part of the relevant public identified the services as originating from FCRB. The documents did not make it possible to extract information about the trade mark awareness, market share, or the position the mark occupied on the market.

The Board emphasized that evidence such as opinion polls, market research, declarations from professional associations and the market share were of significant importance for determining enhanced distinctiveness.

Therefore, the overall inherent distinctiveness of the earlier mark was deemed to be average.

Likelihood of confusion

In assessing the likelihood of confusion, the BoA referred to the interdependence principle of the relevant factors.

The Board also recalled that excessive protection may not be given to elements that have a very weak or no distinctive character. Therefore, the coincidence in an element that has a weak or no distinctive character does not often lead to a finding of a likelihood of confusion.

Considering that the common element ‘OKTOBER FEST’/‘Oktoberfest’, respectively, was deemed to be weakly distinctive at best, the Board held that the differences between the signs were sufficiently pronounced to exclude a likelihood of confusion.

Comment

The decision continues the strict case law on weakly or non-distinctive elements. Identity or similarity in such elements is unlikely to lead to a likelihood of confusion, unless an enhanced degree of distinctiveness of these elements or the entire earlier mark can be claimed.

In order to invoke increased distinctiveness, it must be shown that the trade mark as registered has been used intensively for specific goods/services. While evidence such as invoices, contracts, balance sheets and financial statements are helpful to establish genuine use of a trade mark, they are generally insufficient to show that the public is familiar with the trade mark. Properly conducted market surveys, a notable market share, significant press coverage and declarations from professional associations about the perception of the trade mark should be submitted instead.