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European trade mark "Oktoberfest": application for registration partially rejected

Industrial property law

European trade mark "Oktoberfest": application for registration partially rejected

The decision issued on 26.08.2020 by the Court of Appeal in case no. R1840/2019-4 partially rejected the application for registration of the word mark "OKTOBERFEST" appleid by the City of Munich in June 2016, as a European Union trademark (EUTM).

In particular, the City of Munich applied for registration in 27 different Nice Classes, seeking to obtain the exclusive right to use this mark for a large number of goods and services, and also becoming the sole owner of the right to license this mark to anyone who wanted to use it, for example to organise a party. This application for registration has raised many objections from several third parties, not only German but also Austrian, in fact the famous beer festival, known as "Oktoberfest", takes place in many German cities, but also in several other EU countries.

According to constant jurisprudence, a trademark has a distinctive character when it is able to identify the product or service for which registration is applied for as originating from a specific company, a unique and different sign compared to competing trademarks that distinguishes it in the eyes of the relevant public.

On the basis of this rule, the examiner, in application of Art. 7 (1) (b) and (c) EUTMR, in conjunction with Art. 7 (2) EUTMR, had issued a decision to refuse registration of the mark for the most categories of goods and services indicated by the applicant in twenty-five different Nice classes, as it considered "Oktoberfest" descriptive in those categories (designates a festival, in particular a folk festival, held in the autumn) for a number of goods and services having to do with festivals (e.g. Class 41, supply of food and drink, food and drink as goods). It has therefore considered the registration valid only for 5 of the Nice Classes indicated by the applicant, for a limited group of goods and services.

The City of Munich has not hesitated to appeal against this decision of the office, obtaining, in the decision indicated in the inscription, a partial reform of the decision taken by the examiner and an extension of protection for some of the goods and services for which it had applied, thus obtaining consent for 19 Nizza Classes.

Will the City of Munich be satisfied with this result or will it appeal to the higher court to obtain recognition in the other classes as well?