EUIPO Board of Appeal should carry out own independent assessment, holds General Court – World Trademark Review

(This article was written for the World Trademark Review. The original article was published on April 14, 2016.)

In a recent decision (T-501/13, March 18 2016) the General Court held that the EU IP Office (EUIPO, formerly the Office for Harmonisation in the Internal Market) Board of Appeal should not have treated decisions on the registrability of the WINNETOU mark from the German national courts as binding in an EU trademark invalidity action, but rather should have made its own independent assessment of the mark.


In 2003 publishing company Karl-May-Verlag GmbH registered the WINNETOU mark as an EU trademark. The registration applied to a wide range of goods and services in Classes 3, 9, 14, 16, 18, 21, 24, 25, 28, 29, 30, 39, 41, 42 and 43. In 2010 the registration was subject to an application for a declaration of invalidity filed by Constantin Film Produktion GmbH. The application claimed that the mark was descriptive and devoid of distinctive character, and therefore should not have been registered. Initially, the Cancellation Division rejected the application. However, in 2012, following an appeal the First Board of Appeal set aside the Cancellation Division’s decision, declaring the registration invalid except for limited goods in Class 16.

Regarding the descriptive character of the mark, the appeal board stated that Winnetou was a major character in a series of novels by author Karl May and the protagonist in films and plays. As such, the relevant consumer would understand the word to refer to the fictional Native American character. This conclusion was reached having regard to the earlier decisions of the German national courts concerning the same mark. When assessing the mark in the context of certain goods and services such as films, printed matter, photographs, entertainment services and exploitation of industrial property rights, the mark was considered descriptive as the relevant consumer would associate those services with the character Winnetou. The remaining goods and services, except for printers’ type and printing blocks, could all be considered “merchandising” and as such could also be associated with the fictional character Winnetou. Consequently, the mark was considered descriptive and non-distinctive for all those goods and services and the registration was therefore declared invalid.

General Court decision

The decision was appealed to the General Court, which annulled the appeal board decision. The General Court’s reasoning was two-fold:

  • the appeal board breached the principles of autonomy and independence; and
  • the appeal board’s statement of reasons was inadequate.

When considering the case, it was clear that the appeal board relied heavily on the earlier decisions of the national German courts, which dealt with the same mark shortly after the contested EU trademark was filed. However, the General Court concluded that the appeal board’s reliance on the earlier German decisions was a breach of the principles of autonomy and independence of the EU trademark. The General Court held that the appeal board had accepted the findings set out in the German court decisions regarding the registrability of the WINNETOU mark, without carrying out an independent assessment in light of the evidence and arguments submitted by the parties involved. The finding that the mark was not registrable was not the result of an autonomous assessment by the appeal board. The EUIPO argued that the appeal board was required to take into account the German decisions as they:

  • had dealt with the identical mark;
  • came from a higher national court;
  • related to partly identical goods and services; and
  • had been handed down shortly after the contested EU trademark was filed.

However, the General Court found that the appeal board had treated the German courts’ decisions as binding, as opposed to merely possessing indicative value.

In addition, the General Court also found that the appeal board had provided inadequate reasoning as regards the perception of the WINNETOU mark. In particular, in relation to the general merchandising category of goods, the General Court found that grouping together various goods under the general term ‘merchandising’ was inappropriate considering the wide range of goods involved, some of which were entirely  different in nature. For example, merchandising in this case included goods from 11 different classes such as perfumery, jewellery, stationery, textiles, games, office requisites and meats. The General Court considered there to be no specific reasons given as to why all of these goods could be categorised together under the heading ‘merchandising’ given the obviously different characteristics and intended purpose of the goods in question. Such categorisation and the statements made by the appeal board regarding the merchandising was considered by the General Court to amount to general assertions which were devoid of any specific analysis in relation to the nature and characteristics of the goods in question, all of which could not be considered to form a homogeneous category of goods.

As a consequence, the General Court annulled the appeal board’s decision and the matter will now be referred back to the appeal board for a fresh decision. It remains to be seen whether the fresh decision will uphold the original decision of the Cancellation Division to reject the application for declaration of invalidity or hold the EU trademark registration for the WINNETOU mark to be invalid after an independent autonomous assessment of its registrability.

If you would like to learn more on this issue, please contact Shauna Tilley, European Trade Mark Attorney.