The story of Winnetou and European trade mark law: is this the Apaches last battle?
Winnetou, the noble Indian chieftain in Karl May’s novels, has been one of the favourite characters for generations of kids: a respected man and a promoter of peace. Who would have thought that he could end up being the subject of a rather legalistic trade mark dispute before the courts of the European Union?

This is how the story goes: since 2003, the Karl-May-Verlag GmbH has been holding the rights over the community word mark WINNETOU for numerous goods and services. In 2009, however, the German company Constantin Film Produktion GmbH filed for the declaration of invalidity of this word mark before the European Union Intellectual Property Office (EUIPO or, as it was called at that time: OHIM), alleging that the sign WINNETOU is descriptive and it is not eligible for trade mark protection. The OHIM rejected the application for a declaration of invalidity in the first instance. Interestingly, probably due to the German background of the case, the OHIM in the second instance proceeded to analyse the issue on the basis of German case-law in relation to German-speaking consumers. Based on this case-law, the OHIM came out in favour of the applicant and annulled the word mark WINNETOU, except for a few products in class 16 (namely “printers” and “printing blocks”).

 

The OHIM’s decision was then challenged in front of the General Court, which handed down its judgment on 18 March 2016. Here, Winnetou (or, to be precise: Karl-May-Verlag GmbH) won this battle as the General Court annulled the second instance decision of the OHIM and rejected the application for a declaration of invalidity. The General Court emphasized that the system of Community Trademarks is an autonomous system with its own set of objectives and rules; it applies independently of any national system. The General Court thus emphasized that although the OHIM has the right to take into consideration national case-laws, “In the present case the Board of Appeal [of OHIM] is not criticized for taking into consideration the decisions of the German Courts, but for having taken the view that is was bound by those decisions.” The General Court also found a breach of the principle of independence: the General Court held that the OHIM failed to carry out the independent analyses and evaluation of the case as it directly referred to the ruling of the German court. In the words of the General Court the assessment “in Classes 41 and 42, is not the result of an autonomous assessment by the Board of Appeal, since the latter states […] that ‘according to German case-law, the German consumer will assume that ‘Winnetou’ merely describes the fact that a ‘Winnetou’ film, a ‘Winnetou’ book or the like is concerned.’

 

Consequently, the General Court has shot a lethal bullet into the body of the OHIM’s decision, which resulted in its annulment. Could this be the revenge of Winnetou’s close friend Old Shatterhand? Only the great storyteller, Karl May could tell…But the story is perhaps not over yet: OHIM still has the right to appeal to the Court of Justice: we will keep you updated!


more blogs
Coronavirus and Competition Law
continue reading
National security screening introduced for foreign investors in Hungary
continue reading
Hungarian Competition Authority - draft commitment guidelines published for consultation
continue reading
The Hungarian Competition Authority used its new powers to obtain information in merger cases
continue reading
M&A Insights – Due Diligence from the Buyer’s Perspective
continue reading
M&A Insights – a new blog series
continue reading
power search
search

search alphabetically
by last name
a|b|c|d|e|f|g|h|i|j| k|l|m|n|o|p|q|r|s|t| u|v|w|x|y|z


quick tips
Call us
Ask a Question




follow us
LinkedIn RSS