Oktoberfest

We were already aware that Oktoberfest beer must come from Munich, as it is a protected geographical indication.

However, OKTOBERFEST is also a European trademark, which is registered for many products and services in the name of Landeshauptstadt München. Is this trademark valid now that it is the name of a beer festival celebrated all over the world? When used on products, is this word seen as a trademark ('distinguishing products of one company') or just a descriptive indication? This question arose when a trademark firm (presumably acting for a client who wished to remain anonymous) filed a revocation action against the European trademark OKTOBERFEST. A key detail was that at the time of OKTOBERFEST's application, the trademark had initially been refused by the European Trademark Office.

The date on which the purportedly descriptive character had to be assessed was the date of filing the European Trademark application. The applicant presented several documents with the intention to demonstrate the widespread use of the term. Additionally, an intriguing aspect of the case was the claim of bad faith: alleging that the respondent acted unlawfully by filing a trademark that is descriptive, knowing that it is already commonly used by everyone.

Naturally, the defendant disagreed: it is common knowledge that Oktoberfest is from Munich. Therefore, consumers see this word on products as a trademark.

The European Trademark Office initially assessed whether the mark was descriptive. The evidence provided focused solely on glasses and clothing, demonstrating that the name was indeed in widespread use during the time of the application. Consequently, the revocation action proved successful for these specific products in these classes. However, when it came to the other goods and services, the connection between the word and the respective products was not as straightforward or evident.

Claiming bad faith also did not succeed. While a question of bad faith may arise if a person or company can demonstrate prior use, asserting that a trademark has been used by multiple parties does not specify the exact entities involved at the time. As a result, it becomes impossible to assess whether the application was filed in bad faith, as the mere fact that someone else has used an identical trademark is insufficient evidence to prove bad faith.

The revocation action was successful for 2 classes, but not for the vast majority of classes. Does this mean that the respondent has won? We would argue that this decision is still somewhat disturbing, as it means waiting for convincing evidence of generic use of the name for other products.