IP protection for OKTOBERFEST

The city of Munich owns several trademark registrations for a broad variety of goods and services, including:

• EU trademark 018317924 MÜNCHNER OKTOBERFEST (Classes 03, 04, 06, 09, 14, 16, 18, 21, 24, 25, 26, 28, 31, 34, 35, 36, 38, 39, 40, 41, 42, 43 and 45);
• EU trademark 018317926 OKTOBERFEST MÜNCHEN (Classes 03, 04, 06, 09, 14, 16, 18, 21, 24, 25, 26, 28, 31, 34, 35, 36, 38, 39, 40, 41, 42, 43 and 45);
• EU trademark 014912802 WIESN (Classes 03, 09, 38, 39, 40 and 42);
• EU trademark 018317922 WIESN (Classes 03, 04, 06, 09, 14, 16, 18, 21, 24, 25, 26, 28, 31, 34, 35, 36, 38, 39, 41, 43 and 45); and
• EU trademark 018321414 WIESN(Classes 03, 04, 06, 09, 14, 16, 18, 21, 24, 25, 26, 28, 31, 34, 35, 36, 38, 39, 40, 42, 43 and 45); and
• EU trademark 012898979 OIDE WIESN (Classes 03, 04, 06, 09, 14, 16, 18, 21, 24, 25, 26, 28, 29, 30, 31, 32, 33, 34, 35, 36, 38, 39, 40, 41, 42, 43 and 45).

For those unfamiliar with the expression “oide Wiesn” (“old Wiesn”), this event first took place in 2010 to mark the Oktoberfest’s 200th anniversary with old-fashioned rides and a traditional puppet theatre. Due to its success, it became a permanent event.

More recently, another trademark application in the name of the Landeshauptstadt Munich was registered with the EUIPO, namely EU trademark 015535008 for OKTOBERFEST. After year-long proceedings, not only due to an initial refusal raised by the examiner but also due to numerous third-party observations, the Board of Appeal (Appeal R 1840/2019-4) finally issued its decision on the matter, ruling that the mark is to be considered descriptive for goods and services that have to do with festivals. However, no descriptiveness objection applies for such goods and services that fall under the notion of souvenir and merchandising articles. Thus, the mark was registered on 31 August 2021 for a variety of goods and services in Classes 3, 4, 6, 9, 14, 16, 18, 21, 24, 25, 26, 28, 31, 34, 35, 36, 38, 39, 40, 42, 43 and 45 but not Classes 29, 30, 32, 33 and 41.

The Oktoberfest alternative – the WirtshausWiesn

When the Oktoberfest was cancelled last year, the Münchner Innenstadtwirte eV (an association of owners of taverns in Munich city centre) came up with an alternative event, the so-called ‘WirtshausWiesn’. Association members organised Wiesn-like events in their taverns or wirtshäuser, including traditional music, during the time that the Wiesn was supposed to have taken place.

The German Patent and Trademark Office refused an application for the corresponding word mark for being descriptive and lacking distinctiveness. However, the application was registered on 20 August 2020 under (30 2020 016 297) for services in Classes 35, 41 and 43 including – of course – entertainment and catering services.

Oktoberfest goes Dubai

Earlier this year, there were news stories that an Oktoberfest would take place in Dubai using slogans such as “Oktoberfest goes Dubai”. The city of Munich filed an application for a preliminary injunction with the Regional Court of Munich against the organisers of that event, based on legal provisions set out in the German Unfair Competition Act.

By its decision of 25 June 2021 (17 HKO 7040/21), the court prohibited the organisers of the event from creating the impression that the Munich Oktoberfest would move to Dubai in 2021. It confirmed that the use of the slogan “Oktoberfest goes Dubai” is not only to be considered as misleading in accordance with the act, but also as unfair exploitation of reputation.

Münchener Bier and Münchner Weißwurst

Finally, it is worth pausing to reflect that Münchener Bier (Munich beer) – for which the Oktoberfest is especially famous – is a protected geographical indication (PGI). It is registered under file number PGI-DE-0516 with a priority date of 18 July 1998.

The term OKTOBERFEST-BIER itself is also registered in the name of the Verein Münchener Brauereien eV (Association of Munich Breweries) as a word mark in Germany and the European Union, and as an international registration with several designations.

Another typical Bavarian dish is the so-called Münchner Weißwurst (white sausage), although this is not protected as a PGI. The German Patent and Trademark Office granted a request for PGI status filed in 2004 by an association of local Munich producers – however, several competitors appealed this decision. The Federal Patent Court ruled in 2009 (Case 30 W (pat) 22/06) that the term ‘Münchner Weißwurst’ does not fulfil the requirements of a PGI. Thus, a weißwurst might be produced in other parts of Germany and may not contain veal, unlike the original version.

This article was first published on World Trademark Review on 30 September 2021: www.worldtrademarkreview.com.