Since 2003, German publishers Karl-May have held the Community trademark WINNETOU, which is used inter alia for printed material, films, jewellery, clothing, perfume, cosmetics, leather products, household items, food, games, and events as well as transport services, accommodation and catering. But in 2013, following the application for a declaration of invalidity from the German company Constantin Film Produktion GmbH, the mark was annulled in 2013 by the Office for Harmonisation in the Internal Market (OHIM), except in regards to ‘printers’ type’ and ‘printing blocks’. The Trademark Office took the view that the term Winnetou evoked reference to the Native American chieftain who is the protagonist of novels published by Karl May, and the main character of films and other plays, and therefore the sign was descriptive and devoid of any distinctive character, meaning that it could not be protected as a mark or consequently be monopolised.
The General Court of the European Union has on the 18 March 2016 upheld Karl-May’s action, annulling the previous decision of the Trademark Office. The General Court stated that the OHIM “infringed the principles of autonomy and independence which govern Community trademarks”. It is the opinion of the Court that the Office should not have granted the application for a declaration of invalidity by Constantin Film, without first independently assessing whether WINNETOU was descriptive with regards to the specified products and services.
This General Court of the European Union held that “OHIM infringed the principles of autonomy and independence which govern Community trademarks” and that it failed to give sufficient reasons for its decision. The Court also stated that the descriptive character of the goods as “merchandising” goods was too general and abstract, and that it should have carried out a specific analysis of the nature and characteristics of the goods in question, and should have carried out a more in-depth analysis of how the sign Winnetou evokes a fictional character and would generally refer to concepts of ‘Native American’.
As the Court has annulled the OHIM’s decision, the OHIM must now rule again on the declaration of invalidity brought by Constantin Film, taking into account, the Court’s judgement.