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Virtual goods and services are becoming more and more popular and valuable. Therefore, owners of trade marks protected for physical goods and services should secure trade mark protection for the virtual counterparts of their physical products.
How important it is to seek protection for virtual goods and services as soon as possible shows a case recently decided by the General Court of the European Union. Thomas Grimm explores this case in this article.
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The German watchmaker Glashütter Uhrenbetrieb GmbH – Glashütte/Sa. has registered its trade mark for watches in class 14 in 2005 with the European Union Intellectual Property Office (EUIPO). To secure trade mark protection also for the virtual side of things the owner of this trade mark filed an application of an identical mark in class 9 for virtual watches, in class 35 for retail services in relation to virtual watches, and in class 41 for entertainment services with regard to virtual watches.
Setting the scene
Before explaining the case, one needs to know what the term Glashütte means to consumers interested in watches. Glashütte is a small town in eastern Germany close to Dresden. It is famous for the manufacture of high-quality watches and for being the cradle of German watchmaking. Currently, 10 watchmakers are producing in Glashütte; one of them marks its watches with the mark Glashütte Original.
One might wonder why this application went up to the General Court. The reason is that the EUIPO denied the registration of the mark for virtual watches because a lack of distinctiveness. The mark would simply evoke the reputation of the German town Glashütte for excellence in the field of watchmaking and this would also apply in the context of virtual watches. The relevant public will transfer the reputation of Glashütte for physical watches to their virtual equivalents.
Both the Board of Appeal and also the General Court agreed with this finding. The other element ORIGINAL is obviously not distinctive and the stylization of Glashütte is only commonplace so does not lift the mark over the distinctiveness threshold.
The question is, if the mark is not distinctive for virtual watches why did the owner get the identical mark registered for watches at the EUIPO? The mark was registered in 2005 when the EUIPO’s examination practice might have been less strict or maybe the application just slipped through. Of course, the applicant indicated this earlier registration in the proceedings but according to settled case law and practice the Court stated that it is not bound by decisions of examiners and that one cannot rely on older registrations, as they might have been registered in violation of the EU Trade Mark Regulation.
Will the applicant still be able to prevent third parties from using or registering their mark for virtual watches?
Given the Court sees such a close connection between physical goods and virtual goods, one might think that this should suffice for a similarity between them, so that the applicant could proceed against third parties based on a likelihood of confusion.
However, a recent opposition decision of the EUIPO denied similarity between retail services for virtual soaps and real soaps. The Guidelines of the EUIPO do not basically exclude a similarity between virtual and physical goods. However, it depends on the specific case and also on the arguments and evidence that the opponent files, if there is a similarity or not. Glashütte Original might be able to prevent others from registering or using their mark for virtual watches based on their reputation.
But what about marks that do not enjoy a reputation?
For those marks, it is highly recommended to file applications for the virtual counterparts as soon as possible, if this comes into question in the future. Even if this is unclear at the moment, applications are still recommended, because any new application would enjoy a 5-year non-use grace period starting after registration.
If you don’t have registrations for virtual counterparts of your products yet, then it’s time to file.
This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK adviser.
