The decision of the EU’s General Court in the Glashütte case has directly extended the distinctiveness of a trademark to the virtual world, in the context of a clear evolution of European Union trademark case law; what does this mean in terms of trademark protection strategy?

On 11 December 2024, the General Court of the European Union (GCEU) issued an interesting ruling in case T-1163/23, essentially stating that the distinctive character of a mark in relation to products in the physical world can be the same for the corresponding products in the virtual world.

Facts in the case

The Glashütter company filed an application for registration of a European Union trademark for the figurative mark reproduced; the application listed the products and services for which trademark registration was requested, all relating to the watchmaking sector in classes 9, 35 and 41, and including virtual products and services such as watches and digital accessories to be used in online environments or virtual worlds, as well as various virtual sales and entertainment services concerning watchmaking products.

The European Union Intellectual Property Office (EUIPO) and its Board of Appeal rejected the application both in first and second instance, on the ground that the mark lacks “distinctive character” because it is associated by the relevant public with the German town of Glashütte, renowned for its numerous high-quality watchmakers.

The requested trademark would therefore be perceived as a mere indication of the origin of the product and would not allow the public to distinguish the commercial origin of the products and services.

Glashütter filed a further appeal with the GCEU, arguing that in the virtual world the town of Glashütte has no reputation for watchmaking, that the relevant public for real-world watches differs from the relevant public for virtual watches and that the reputation of the town of Glashütte in the watchmaking sector is therefore not transferable to the virtual world.

The General Court’s ruling

According to the ruling of 11 December 2024, in the presence of certain conditions to be assessed on a case-by-case basis the relevant public can perceive the trademark for virtual products and services in the same way as it perceives the trademark for the corresponding physical products and services.

In the case at hand, the public, exposed to the “Glashütte ORIGINAL” brand for virtual products and services in the watchmaking industry, would perceive the same positive feelings regarding the quality and authenticity of physical products and services, as a logical extension of the reputation of the town of Glashütte for watchmaking.

Comment

The ruling is interesting because it states that a trademark’s distinctive capability is not limited to physical products and services but can extend to products and services that emulate them in the virtual world, regardless of assessments of the difference between real and virtual products.

The decision should be read as part of a gradual evolution of the EUIPO’s position and of the case law of European Union courts, that are adapting to the fact that real-world products are increasingly reproduced in the virtual world.

Obviously, based on this principle, a trademark’s distinctiveness in the physical world can be no different for the same products and services in the virtual world.

The risk to be avoided is that a different reasoning is followed in the choice of new trademarks for the virtual world, departing from the key principles governing the protection of trademarks for products and services for the physical world.

At the same time, it is always advisable to prevent digital products bearing a third-party trademark, for example included in video games and/or metaverses, from coming into conflict with trademarks that distinguish the same products in the real world.

In terms of trademark protection strategy, it may be advisable for trademark owners to take into account both real and virtual products and services of interest when monitoring new filings of potentially conflicting trademark applications.

Thanks to Carlo Lamantea for contributing to this news item.

Information

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