On March 18, 2016, the General Court of the European Union ruled that the well-known novel character Winnetou shall continue to enjoy trademark protection (Az.: T-501/13).

GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: The Apache chieftain Winnetou is known by generations of people through films and novels. In the context of a trademark dispute, the General Court of the European Union has now ruled that the word mark “Winnetou” shall, at least for the time being, continue to be protected as a Community trademark. In doing so, the EGC overturned a decision of the EU Trademark Office to annul the trademark.

For years now, a publishing house and a film company have been quarrelling over the protection afforded to the word mark “Winnetou”. The publishing house had Winnetou registered as a Community word trademark in 2003 not only for printed matter but also, among other things, for jewellery, perfume, cosmetics, leather goods, foodstuffs, clothing, events and holiday camps. The film company had applied in 2013 to the Office for Harmonisation in the Internal Market (OHIM) to have the trademark invalidated. The Trademark Office granted the application and the trademark was then cancelled for everything except “printers’ type” and “printing blocks”. It stated that consumers associate Winnetou with the well-known chieftain from the novels and films. Regarding the other products, it went on to say that the mark lacked the necessary distinctive character.

The publishing house’s subsequent action against the decision to annul the trademark was upheld. The EGC took the view that OHIM had infringed the principles of autonomy and independence which govern Community trademarks. Furthermore, the Trademark Office was said to have drawn on the decisions of the German courts, according to which the term “Winnetou” was descriptive and could not be registered as a trademark, instead of assessing the matter independently. The Court found that this was also the case with respect to the issue of whether the necessary distinctive character was present. It held that the Trademark Office had failed to explain why consumers primarily associate the term “Winnetou” with a fictional Indian.

The EGC therefore annulled OHIM’s decision. OHIM must now rule again on the application to have the trademark declared invalid.

Trademarks bolster brand recognition among consumers. Accordingly, it is important that they be protected. Having said that, the registration needs to be well prepared and cannot infringe third party trademark rights. Businesses concerned can turn to lawyers who are competent in the field of trademark law for assistance and to enforce or fend off claims in the event that trademark violations occur.

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