EU General Court confirms that “WINDSOR – CASTLE” can be registered as a trademark
With a recent decision of last 24 March (T-93/20), the EU General Court granted the appeal filed by the company Albert Darboven Holding GmbH & Co. KG against EUIPO’s refusal to register the word trademark “WINDSOR – CASTLE” and consequently annulled the relevant decision of the EUIPO’s Board of Appeal.
The trademark application at issue, filed in classes 16 (paper filters) and 30 (coffee, tea, baked goods and sweets) of the Nice Classification, had originally been refused by the Examiner due to its lack of distinctive character under Article 7(1)(b) of EU Regulation no. 2017/1001 (EUTMR) with reference to the products in class 30. In fact, the trademark would have been likely used to market products in gift shops, i.e. in the context of tourism in relation to the British royal family and Windsor Castle and, therefore, it would have been directly associated to the latter by the relevant public and would not have been perceived as indicating the commercial origin of the claimed products. Moreover, since it would have been perceived as a mere promotional message concerning Windsor Castle, under Article 7(1)(b) EUTMR it could not be registered due to its unsuitability to identify the commercial origin of the same products in class 30. The EUIPO’s Board of Appeal also subsequently confirmed such ascertainment.
This decision was appealed before the EU General Court by the applicant, which claimed that the possible association between the trademark and Windsor Castle could not in itself lead to the conclusion that the trademark did not have a distinctive character. In fact, the EUTMR does not prevent the registration of trademarks bearing the name of historic buildings or museums, nor is a particular creative or original character required for a EU trademark to be registered.
In this regard, the General Court endorsed the applicant’s arguments and stated that the words “WINDSOR – CASTLE” did not describe the products claimed in the application or their characteristics, nor that Windsor Castle was known or renowned for the production of coffee, tea or sweets. In addition, the General Court pointed out that such products could actually be sold in contexts other than souvenir shops in the United Kingdom and that, in any case, the place of sale of the products is not relevant to ascertain the distinctive character of a trademark, since it does not provide any information on the nature or characteristics of the products claimed (especially when, like in the present case, they are consumer products generally sold in grocery stores and supermarkets).
On the other hand, as concerns the laudatory nature of the trademark, according to the arguments submitted by the EUIPO in the proceedings before the General Court, the trademark lacked any distinctive character as it merely conveyed a positive message concerning Windsor Castle, linked to a particular way of living and, more specifically, to the typical afternoon tea tradition of the British royal family, thus preventing consumers from associating the sign with the commercial origin of the products. In this regard, the General Court once again contested EUIPO’s observations, arguing, on the one hand, that they had been made explicit for the first time in the proceedings commented on here and, on the other hand, that the words “WINDSOR – CASTLE” in no way would have been perceived as a promotional slogan with regards to the products in class 30, given that the castle does not have any reputation with respect to the production of the same.
Lastly, the Court ruled on the claim of the Board of Appeal according to which the lack of decorative elements and additional distinctive terms in the trademark led to a lack of originality and meaning of the same trademark and, therefore, prevented its registration. On this matter, the General Court pointed out that a sign could be registered regardless of any degree of creativity, since a minimum degree of distinctiveness is enough for its registration as a trademark.
On the basis of the above reasoning, and consistent with the decision issued by the General Court in a similar dispute relating to the “Neuschwanstein” trademark and the homonymous Bavarian castle (T-167/15), the Judge concluded that, although the relevant public could associate the “WINDSOR – CASTLE” trademark with the well-known British castle, such a trademark is in any case able to identify the commercial origin of the claimed products, and has therefore a minimum degree of distinctive character in relation to the same products. Consequently, the Court annulled the decision of the Board of Appeal, referring the case back to it to assess any further grounds of refusal.