Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehör Walter Huber
A geographical name cannot be registered if it is associated with the goods or may be in future, unless it has acquired distinctive character through use.
Facts
Windsurfing Chiemsee, a company based near Lake Chiemsee, the largest lake in Bavaria, sold sports clothing and equipment under the name Chiemsee, which it had registered as a picture trade mark. Mr Huber sold sportswear near the lake, also using the name Chiemsee in a different graphic form. Windsurfing Chiemsee sued for infringement, and the question arose whether the name Chiemsee could be registered as a trade mark.
Legal principle
The Court of Justice held that the exclusion of geographical names that designate the geographical origin of goods applies not only to names that are currently associated with the goods, but also to names that are liable to be used in the future by the undertakings concerned as an indication of the geographical origin of that category of goods. A geographical name may be registered if it has acquired distinctive character through use, which depends on whether the relevant class of persons, or at least a significant proportion of them, identify goods as originating from a particular undertaking because of the mark.
Related cases on trade marks: registration
- Chocoladefabriken Lindt & Sprüngli AG v Franz Hauswirth GmbH Case C-529/07, [2009] ECR I-4893
- Hauck GmbH & Co KG v Stokke A/S Case C-205/13, EU:C:2014:2233
- Koninklijke KPN Nederland NV v Benelux-Merkenbureau (Postkantoor) Case C-363/99, [2004] ECR I-1619
- Koninklijke Philips Electronics NV v Remington Consumer Products Ltd Case C-299/99, [2002] ECR I-5475
- Libertel Groep BV v Benelux-Merkenbureau Case C-104/01, [2003] ECR I-3793
- London Taxi Corp Ltd v Frazer-Nash Research Ltd [2017] EWCA Civ 1729, [2018] FSR 7
- Procter & Gamble Co v OHIM (Baby-Dry) Case C-383/99 P, [2001] ECR I-6251
- Shield Mark BV v Joost Kist Case C-283/01, [2003] ECR I-14313
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