Rough times for Oktoberfest

Times are rough with Covid-19 leading to the cancellation of this year’s famous Oktoberfest celebrations in Munich and yet another (partial) defeat in terms of the application of a word mark “Oktoberfest” as a European Union Trademark (No. 15535008).

“Oktoberfest” directly describes a “festival in the month of October” stated the EUIPO, which was confirmed by the recent decision of the Board of Appeal. However, the mark was allowed for registration for the majority of so called “merchandising goods” such as cosmetics, clothing, printed matter, and games as well as a number of services not related to the offering of food and beverages, including hotel services, telecommunications, marketing and travel services.

But first things first:

What started as a horse race in honour of the wedding of Prince Regent Ludwig of Bavaria in 1810 and went on as a beer festival in 1819, Oktoberfest has become the world’s largest folk festival with a lot of beer consumption.

In 2016 – rather late one may presume – the City of Munich applied for a word mark “Oktoberfest” to protect its iconic festival from copycats. The trademark was applied for a vast number of goods and services, inter alia, of course “arranging of fairs and festivals (entertainment)” in Class 41. The application was denied registration.

The Decision of the EUIPO

While the word mark “Oktoberfest-Bier” is registered in the name of the Association of Munich Breweries for – beers – as a collective mark and due to acquired distinctiveness, the Office objected to the application of a word mark by the City of Munich in what has been, according to the Office, one of the largest cases of absolute grounds of refusal so far. Several times, the City of Munich was given the chance to submit documents to the Office.

In its decision in 2019, the EUIPO stated that the sign lacks distinctiveness and is descriptive for a large part of the goods and services applied for, especially for services connected to fairs in Class 41, but also for most of the goods which could be used for merchandising. As the word “Oktoberfest” is a German word, the examiner concentrated on the German-speaking part of the European Union, namely Germany and Austria. In view of the large number of documents filed, those for Austria were examined in detail.

The decision was based not only on a formal objection issued by the Office, but also on a number of Third Party Observations filed. These Observations referred to the fact that there exists a large number of Oktoberfests around the world (a total of 2054) and that therefore the term “Oktoberfest” describes festivals in the month of October in general as well as the place where the festival takes place and the goods may be bought.

Further, the City of Munich failed to show acquired distinctiveness for the mark in a number of ways, most notably on the basis that the survey evidence submitted contained a number of methodological errors and focused on fair visitors, rather than the general population. Irrespective of those errors, the degree of recognition and association of “Oktoberfest” to the City of Munich was only 36% and the Examiner required recognition above 50%.

The Appeal[1]

The City of Munich appealed this decision before the Board of Appeal.

The Board had to decide this matter at precisely the time when huge events involving hundreds of people were banned by governments due to the pandemic. However, the Board emphasized that this had no effect on the outcome of the decision.

The Board agreed with the EUIPO’s Examination Division that the term “Oktoberfest” is descriptive for a fair held in the month of October and is used by a large number of other organisers of beer festivals. However, they disagreed on the assessment of the evidence put forward by the City of Munich; although there are a number of other folk festivals across Germany and Austria, there was no evidence that consumers would assume that the City of Munich would also be the organiser of those festivals, as is the case with Oktoberfest Munich.

It therefore largely set aside the EUIPO decision but maintained the objection for those services related to the provision of food and drink (in Classes 41 and 43) as well as the related food and drinks in Classes 29, 30, 32, 33.

Concluding, the Board explained that the City of Munich enjoys protection of the term “Oktoberfest” for several merchandising goods and may therefore take action against copycats trying to exploit the attractive sign. However, the arranging of the iconic festival “Oktoberfest” itself remains unprotected.

The City of Munich seems not to be giving in that easily, as from recent press articles it may be assumed that it will keep on fighting and will appeal the decision of the Board to the European Union’s General Court. Furthermore, it has recently applied for two new European Union Trademarks “Münchner Oktoberfest” and “Oktoberfest München” on 7th October 2020 and it will be interesting to see how these cases progress.

Prost!

 

[1] R 1840/2019-4

 

This article was prepared by HGF Attorney-at-Law Olivia Petter.