In Case T-1163/23 Glashütter Uhrenbetrieb GmbH v EUIPO (11 December 2024), the EU General Court upheld a refusal to register an EU trade mark (EUTM) for certain ‘virtual’ goods and services in classes 9, 35 and 41, as the contested sign lacked distinctive character.

Relevant law

Under Article 7(1)(b) of EU Trade Mark Regulation 2017/1001 (EUTMR), an EUTM application can be refused on the ground that the sign applied for lacks any distinctive character, in that it does not serve to identify and distinguish the origin of the product(s) or service(s) concerned.

Following established EU case law principles, a mark’s distinctive character is assessed in relation to the goods or services for which protection is sought, and its overall impression as perceived by the relevant public (although a ‘significant part’ of the relevant public will suffice).

Facts

In 2005, Glashütter Uhrenbetrieb GmbH (the Applicant), a watch manufacturer based in the town of Glashütte, successfully obtained an EUTM registration for the following figurative sign, for "watches" in class 14:

In July 2022, the Applicant applied to register an identical sign to the above, this time in classes 9, 35 and 41 (the contested sign). The Applicant sought protection for various categories of virtual goods and services, mainly relating to virtual watches, chronographs, stopwatches, clocks and accessories, as well as retail services and entertainment services featuring these.

The examiner rejected the contested sign as being devoid of distinctive character. This was upheld by the EUIPO Board of Appeal (BoA), who considered that the contested sign would not indicate or distinguish trade origin, but would simply evoke, for a significant part of the relevant German public, the reputation of the town of Glashütte for excellence in watchmaking; and that even the ‘virtual’ goods and services applied for had all referred to watchmaking products and their accessories.

Decision

The General Court dismissed the Applicant’s appeal. Its findings can be summarised as follows: 

• When assessing distinctive character, the EUIPO could take into account well-known facts, without having to establish their accuracy, unless these are contested by an applicant. It was a well-known fact, uncontested by the Applicant, that the town of Glashütte was indeed known as the ‘cradle’ of German watchmaking and Glashütte watches. This reputation extended beyond just watchmaking (as the Applicant contended), to the manufacture of luxury, high-quality watches, given several major luxury watchmaking companies were located there.
• The BoA had not erred in considering the impressions evoked to the relevant public by the words "Glashütte" and "original", finding that the word elements were devoid of any distinctive character.
• It was sufficient that (a lack of) distinctive character existed for a significant part of the defined relevant public, rather than all of it. This was the case here, with the ‘significant part’ comprising both the general public and the professional and specialist public, who were interested in the virtual goods and services concerned, were familiar with the town of Glashütte and who understood the term "original" as evoking the idea of authenticity and fidelity to the original.
• The relevant public could, in principle, be deemed to perceive virtual goods and services in the same way as the corresponding ‘real’ goods and services, if their nature merely represented or emulated the functions of real goods or services. This was a case-specific assessment, having regard to the particularity of the virtual goods and services in question.
• In this case, Glashütte’s reputation of quality for traditional watchmaking could be extended to the virtual goods and services applied for. These referred to real watchmaking products and their accessories, and could therefore represent them or emulate their functions. When the relevant public was confronted with those virtual equivalents, it would therefore directly perceive the contested sign as a logical extension of the reputation of the town of Glashütte, being given the same positive feelings regarding quality and authenticity. The relevant public would not perceive the mark as indicating the commercial origin of the goods and services concerned, but rather as promotional information as to their quality and authenticity by virtue of being from Glashütte.
• Creative and stylistic elements in the contested sign (such as the use of two different fonts for the words "Glashütte" and "original") were irrelevant, as they did not help the relevant public to identify and distinguish the origin of the goods and services. Both words were already found to have lacked distinctive character, and nothing was added by the banal and purely decorative figurative characteristics of the word "Glashütte".
• The Applicant’s previous EUTM registration for an identical sign, in respect of "watches" in class 14, was immaterial. This did not bind the EUIPO and, as a matter of legal certainty, did not constitute a ground to justify registration of the contested sign.

Comment

This decision is mainly of interest for its confirmation that, when assessing distinctive character, virtual goods and services can be perceived by the relevant public in the same way as ‘real’ goods and services.

However, the application of that principle in this case is perplexing, given the arguably significant difference between ‘real’ watches and virtual ones. The General Court seems to have avoided having to analyse this point further due to its finding that the contested sign did not indicate the origin of the Applicant’s products in a distinctive way, and instead had only promoted the reputation and quality of the town of Glashütte in a general sense. In a more difficult case, where the question of a sign’s distinctiveness is more complicated, the General Court might have had to go further in explaining why the relevant public would consider virtual products and services in the same way as their ‘real’ equivalents.

The decision also helpfully re-asserts the central importance of focusing on a trade mark’s essential function, which is to allow consumers to identify and distinguish a product’s commercial origin.