Is ‘Sophienwald’ a geographical indication? Yes says the General Court, no the German Patent Court

The substantive trade mark law in the EU is largely harmonized. However, this does not mean that the same case brought before different trade mark offices will have the same outcome, as two recent decisions from the General Court (here) and the German Patent Court (here) show. Both decisions concern applications for invalidity of an (almost) identical trade mark. 

Background

In 2014, the company Sophienwald applied for the following EU trade mark:

It covered ‘non-monetary coins’ in class 14 and ‘beverage glassware; materials [cloths] for polishing; wine glasses’ in class 21.

In the same year, Sophienwald also applied for the following German trade mark:

It was filed for ‘coins’ in class 14 and ‘drinking glasses; wine glasses’ in class 21. Both signs were registered.

In 2020, a third party filed applications for invalidity against both trade marks, arguing that they were descriptive of the geographical origin of the goods (Art. 7(1)(c) EUTMR, Sec. 8(2) no. 2 German Trade Mark Act).

While the German Patent and Trade Mark Office rejected the invalidity application, the European Union Intellectual Property Office (‘EUIPO’) and the EUIPO’s Board of Appeal (‘BoA’) declared the trade mark invalid. Sophienwald and the third party appealed the respective decisions.

The General Court’s decision

The General Court dismissed Sophienwald’s appeal.

The judges recalled that signs are not registerable if they: (1) designate specific geographical places that are already famous or known for the type of goods or services concerned and which are, therefore, associated by the relevant public with that type of goods or services; or (2) correspond to geographical names which may be used by undertakings and which must also be kept available for them as indications of geographical origin for the type of goods or services concerned.

The above said, geographical names are registerable if they are: (a) not known to the relevant public; (b) not known as the designation of a geographical place; or (c) because of the characteristics of the place designated, it is unlikely that the relevant public assumes that the type of goods or services originate from that place.

The Court confirmed that the relevant public consists of consumers and professionals in Austria.

The judges also confirmed the BoA’s findings that ‘Sophienwald’ was the historical name of a village in Bohemia in the border region between Austria and the Czech Republic. It has been renamed to Žofina Hut in 1945. Since the beginning of the 19th century at the latest, the area around the village of Sophienwald has been of particular importance for glass art because of the glass factories located there. This allowed the conclusion that at least professionals understood ‘Sophienwald’ as the geographical name of a place linked to the Bohemian tradition of glassmaking at the filing date. Sophienwald itself highlighted the history of this place for the glassmaking industry on its website.

Furthermore, the Austrian Supreme Court confirmed a decision from the Higher Regional Court of Vienna that professionals were aware of the term ‘Sophienwald’ and its relevance for glassmaking. While national judgments are not binding on the EU bodies, they can provide helpful information about the perception of the national public.

The dominant element of the mark was the word ‘Sophienwald’. The figurative element with the letters ‘SW’ would be perceived as an acronym of ‘Sophienwald’ and does not distract from the latter’s descriptive meaning.

Since the goods in question were glassware or goods closely related to glassware, the trade mark constituted a descriptive geographical indication and was deemed to fall foul of Art. 7(1)(c) EUTMR.

The German Patent Court’s decision

The German Patent Court dismissed Sophienwald’s appeal because the contested trade mark was not perceived as a geographical indication at the filing date (2014).

Unlike in the General Court’s decision, the relevant public consisted of the average German end-consumer as well as professionals since the contested sign is a German trade mark.

In analysing the perception of the relevant public, the judges found that ‘Sophienwald’ is a street name in a small town in Germany. This fact was not known to a sufficiently large number of people to find that the sign was understood as a geographical indication at the filing date in 2014.

Outside of Germany, ‘Sophienwald’ was, until 1945, the name of the village that is today called Žofina Hut. The Court found that there was a single glass factory in this village, which operated until 1945. Today, this place has no relevant infrastructure, no train station and no highway. In 2011, only 56 people lived there. The judges considered that, due to the small size and economic irrelevance of the village, the relevant public neither knew Žofina Hut nor its previous name ‘Sophienwald’.

This was even more so since the glass factory in this town was only one of approximately 230 glass factories in the entire Bohemian Forest. The factory was not listed in a historical overview of glass factories in Bohemia. Likewise, each item of evidence on which the Higher Regional Court of Vienna relied in its decision cited by the General Court in the judgment discussed above mention the glass factory in ‘Sophienwald’ briefly and without further details. Moreover, the evidence largely concerned books and articles on Austrian geography, history and regional studies which were not directed at professionals in the glassmaking industry.

The fact that some professionals in Germany might be interested in history and knew about ‘Sophienwald’ was deemed irrelevant. The average professional is decisive, who did not have the knowledge to perceive ‘Sophienwald’ as a geographical indication.

Even if they had this knowledge, they would have also been aware that the village Žofina Hut is economically of little significance and, as a consequence, not have assumed that the registered goods emanate from this location. Further, it seemed unlikely to the judges that this place could become the home of glass factories in the future. It lacked the necessary infrastructure, workforce and raw materials to build such an industry.

For these reasons, the judges found the trade mark not to constitute a descriptive geographical indication.

Comment

The key takeaways from these decisions are:

1. The relevant public is the focal point for most assessments in trade mark law and its perception need not be uniform throughout the EU. This can result in a trade mark being protectable in one Member State but not in another or on the EU level.

2. Historical geographical indications lack distinctiveness, if a significant part of the relevant public still knows the name of the place and connects it to the goods and services.

3. If you apply for invalidity of a geographical indication, it can be helpful to focus on the perception of professionals in the relevant sector. Even though their high degree of attention is not decisive when assessing absolute grounds for refusal, their knowledge is often considered to be broader and deeper than that of end-consumers. However, as the German Patent Court’s decision shows, this extensive knowledge is limited to the professionals’ area of expertise.

4. The procedural differences between the trade mark offices in the EU should also be taken into account. For instance, while the EUIPO’s assessment of an invalidity application is limited to the facts put forth by the parties and well-known facts, the German Patent and Trade Mark Office and the German Patent Court are obliged to find and assess facts of their own motion, i.e. they are not bound to the parties’ averments.