It is a matter of common knowledge that trade marks are not only important to identify the origin of goods and services but also as a lifestyle statement of the consumers. Consequently, the selection of a trade mark name has a huge impact on the success of the product which it names.
In order to derive greater financial benefit and stability traders try to use the name and likeness of deceased celebrities and objects of cultural value. For instance, in Austria local traders have succeeded in registering “Mozart” for certain classes and goods or services. Wolfgang Amadeus Mozart, a prolific and influential composer of the Classical era, is so much of the Austrian’s cultural heritage that many people regard him as a national asset. The trade mark registration of such nation’s culture heritage however, has generated discussion as to whether trade mark registration should be available for heritage signs such as Mozart.
Trade mark dispute about a castle
Recently, in Germany dispute arose in respect to the Neuschwanstein Castle. Neuschwanstein is one of the most famous castles in Germany which were commissioned by King Ludwig II of Bavaria. This was Disney’s Sleeping Beauty Castle. Due to the fact that more than 1.3 million people visit the castle annually, it has become an important source of income for Bavaria. In 1999 the Bavarian Castle Department applied for trade mark protection for the word mark “Neuschwanstein” at the German Patent and Trademark office (“DPMA”) in order to avoid any misuse of the designation “Neuschwanstein”. Over the years the Bavarian Castle Department has enlarged the protection for this trade mark in various classes. The trade mark protection of Neuschwanstein however concerns numerous undertakings such as souvenir traders. Since a trade mark grants the trade mark owner the exclusive right to use the registered trade mark in order to identify his or her products and services to consumers the traders have to obtain licences to use “Neuschwanstein” on their products.
The German federal association Bundesverband Souvenir-Geschenke-Ehrenpreise e.V. filed to have the mark revoked claiming that Neuschwanstein is a national monument which should not be monopolised in favour of one trade mark owner. The DPMA agreed and declared the trade mark “Neuschwanstein” invalid arguing that “Neuschwanstein” was an often used, non-distinctive term and thus not capable of indicating the origin of goods and services marketed under the sign. Through the appeal of the Castle Department the matter will now have to be decided by the German Federal Patent Court.
What is the position in UK?
Ten years ago similar questions arose when a trader applied to register “Jane Austin” for toiletries in England. The novelist Jane Austin has achieved much the same status in England as Mozart has in Austria. However, the application was refused on the basis that members of the public, seeing the words “Jane Austin” on those goods, would view them as indicating Jane Austin memorabilia rather than an indication of trade origin. That means, the more famous the name, the less likely the public would be to regard it as an indication of origin.
These issues highlight the difficulties in creating trade marks, particularly when the trade marks are linked with dead celebrities or heritage sites. Although, famous names are not excluded from trade mark protection, businesses should bear in mind that it’s more likely that third parties will apply to have their registrations revoked if they choose to use such names as their trade marks. Hence, businesses should consider that a successful trade mark registration is not necessarily the end of the battle.