National judgments are not binding for EUIPO
The General Court of the European Union denied a binding effect of national judgments for the European Union Trade Mark. The General Court upholds publisher Karl-May’s action against the EU Trademark Office’s decision to annul the Community trade mark WINNETOU
The EUIPO should not have granted the application for a declaration of invalidity brought by Constantin Film without assessing, independently, whether the sign Winnetou was descriptive for the goods and services at issue
The German publishing house Karl-May is the proprietor of the Community word mark WINNETOU, inter alia for films, printed matter, jewellery, perfumes, cosmetic articles, goods made of leather, household articles, clothing, games, foodstuffs, events and holiday camp services and for the transport of persons, accommodation and catering for guests.
Following an application for a declaration of invalidity brought by the German company Constantin Film Produktion GmbH, the European Union Trademark Office (OHIM) annulled that mark in 2013, except with regard to ‘printers’ type’ and ‘printing blocks’. For the other goods and services, the Trademark Office took the view, with reference to Winnetou, the fictional, noble and good Native American chieftain who is the main character in a series of novels by the German author Karl May and the protagonist of films, radio or theatre plays, that that sign was both descriptive and devoid of any distinctive character, so that it could not be protected as a mark or, consequently, be monopolised.
By its judgment T-501/13 of March 18, 2016, the General Court upholds the action brought by the publishing house Karl-May against the decision of the Trademark Office and annuls that decision.
According to the Court, OHIM infringed the principles of autonomy and independence which govern Community trade marks.
Instead of assessing, independently, whether the sign Winnetou was descriptive for the goods and services in question, OHIM treated the decisions of the German courts — according to which that term was descriptive and could not, therefore, be protected as a mark — as binding. OHIM also repeated that error by finding lack of distinctive character on the basis of the assessments relating to descriptiveness.
The Court observes, furthermore, that the Trademark Office failed to give sufficient reasons for its assumption on descriptive character of „Winnetou“ for merchandising goods.
Since the Court has annulled the Trademark Office’s decsion, the Office must now rule again on the application for a declaration of invalidity brought by Constantin Film.