Background of the Proceedings
On July 1, 2022, the applicant filed the following EU trademark application (No. 018727034):
The application covered, among other things, “downloadable virtual goods such as watches, chronometers, and corresponding accessories for use online or in virtual environments” (Class 9), as well as “retail services and the provision of such virtual goods” (Classes 35 and 41).
By decision of February 13, 2023, the EUIPO provisionally refused registration of these goods and services, invoking Article 1(1)(b) – lack of distinctive character. In the examiner’s view, a substantial portion of the relevant German public would associate the term “Glashütte” with the city of the same name, renowned for its premium watchmaking. According to the examiner, this association would also extend to the virtual realm, as the goods and services in question still concerned watches and related accessories.
An appeal lodged on April 12, 2023, was dismissed by the Board of Appeal on September 29, 2023, upholding the lower-instance decision. Subsequently, Glashütter Uhrenbetrieb GmbH – Glashütte/Sa. filed an action before the General Court (case R 773/2023-5) seeking annulment of the Board of Appeal’s decision.
The General Court’s Decision
The applicant based its action on a single plea in law under Article 7(1)(b) of Regulation 2017/1001, arguing that the Board of Appeal had wrongly found the lack of distinctive character of the applied-for mark. In its judgment, the General Court focused on four key points:
- The reputation of the town of Glashütte in watchmaking,
- The extension of this reputation to virtual goods and services,
- Whether the figurative elements of the mark confer distinctiveness, and
- The existence of a similar mark already registered.
Although the General Court addressed how to assess “virtual goods” and corresponding services, it did not see any need to establish separate examination criteria for this emerging category. Instead, it held that consumers typically perceive virtual goods in the same way as their real-world counterparts.
Glashütte: A Synonym for Watchmaking
Glashütte in Saxony, near Dresden, enjoys worldwide prestige for its high-quality watches. In the Court’s view, this reputation also shapes the perception of the mark in the virtual domain. While the excellent reputation of Glashütte in physical watchmaking does not automatically transfer to the virtual sector, the goods and services at issue were clearly directed toward watches and accessories. The Court concluded that the sign would therefore be understood more as a reference to quality than as an indication of commercial origin.
Carrying Over Real-World Perceptions into the Virtual Realm
The Court further explained that, for virtual goods resembling or imitating their real equivalents, consumers typically transfer existing perceptions into the virtual sphere. However, such a transfer can vary depending on the specific product. In the present case, virtual watches either replicate real watches or imitate their functions. Consequently, the public would immediately associate “Glashütte ORIGINAL” with the watchmaking reputation of Glashütte and perceive the sign more as an advertising reference than as a standalone indication of origin.
To the Point
The applicant has the option of appealing this decision to the Court of Justice of the European Union (CJEU). This step seems all the more significant given that several “Glashütte Original” trademarks have already been registered with the EUIPO and WIPO (e.g., EU 004821773 / IR), some of which still enjoy protection for “watches” (Class 14)—i.e., physical goods. In view of the General Court’s case law treating virtual goods as equivalent to their real-world counterparts, a question arises as to whether these registrations could be challenged or canceled for lack of distinctive character. From the perspective of the trademark owner and its legal advisors, it may be advisable for Glashütte to take early measures to counteract this development.
Source: EUR-Lex