What time is it in the Metaverse? - EUIPO: "Glashütte ORIGINAL" cannot be registered as a trade mark for virtual watches

The name of Glashütte, a town renowned for the art of German watchmaking, cannot be registered for virtual watches. According to the Board of Appeal of the EUIPO, the name "Glashütte ORIGINAL" is perceived by the public as an indication of the particular quality of the watch products - real or virtual - but not as a means of distinguishing them. This designation therefore does not have any distinctive character as a trade mark (EUIPO BK, decision of 29 September 2023, R0773/2023-5 - Glashütte ORIGINAL).

What happened?

The decision of the Board of Appeal of the EUIPO was preceded by the application for registration of the trade mark shown below for products in a virtual environment, including downloadable virtual goods such as chronographs, watches and their accessories in Class 9 and related retail and entertainment services in Classes 35 and 41.

The Examining Division of the EUIPO refused the application in respect of the above-mentioned goods and services on the grounds of lack of distinctive character pursuant to Art. 7(1)(b) of Regulation (EC) 2017/1001 (EU Trade Mark Regulation).

The reasoning: Glashütte is a town in the district of Saxon Switzerland in the East Ore Mountains in Saxony and is known worldwide in particular for the watch manufacturers based there. The relevant public will therefore understand the sign "Glashütte ORIGINAL" merely as an indication that the goods and services are original products from Glashütte, or are at least associated with them. Consumers' perceptions of the value of these products would be transferred to the corresponding virtual products.

The applicant then applied to the Board of Appeal of EUIPO for annulment of that decision, claiming in particular that:

• The reputation of Glashütte relates only to real, i.e. physical watches, which are the result of a complex manufacturing process. However, the registered products from the virtual world have nothing to do with the appearance or the manufacturing process of real watches and are therefore not comparable with them.
• Even if one were to assume that the virtual watches imitate the basic concept of the real watches, there would be no reason to assume that the city of Glashütte has a comprehensible or obvious connection to this concept. Due to the fundamental differences between goods in the real world and the virtual world, no similarity could be inferred with regard to the origin of the comparable goods.

How did the Board of Appeal decide?

The Board of Appeal dismissed the appeal and confirmed that the trade mark lacked distinctive character. It found that the level of attention of the relevant public was medium to high. The target public for the virtual products applied for consisted in particular of users who were enthusiastic about virtual worlds and online games and would therefore pay particular attention to the details and functions of their virtual watches.

The Board then confirmed the refusal of protection for the trade mark on the basis of the recognisable meaning of its individual word elements "Glashütte" and "ORIGINAL". A not insignificant part of the relevant public knows the city of Glashütte, in particular in connection with the manufacture of high-quality watches, and associates the word "ORIGINAL" with the idea of authenticity or fidelity to the original. In its entirety, the sign is merely understood as 'Glashütte authentic'. The trade mark applied for therefore lacks distinctive character precisely in relation to watches and the corresponding services.

In the opinion of the Board, the fact that the trade mark was applied for virtual goods and services cannot change this. In this regard, it should be recalled that the general principles for the assessment of distinctiveness also apply if the trade mark is to be protected exclusively for virtual goods and services.

• Virtual goods and services as such are intended for use in online and/or virtual environments. They can represent products from the real world, imitate the functions of real products or be objects that do not (yet) exist in the real world.
• The sign 'Glashütte ORIGINAL' is intended to be used for virtual goods (or the sale and provision thereof), which are exactly the same goods for which the name of the town of Glashütte is known. In such a case, the use of a geographical indication is likely to arouse positive associations in the relevant public by transferring ideas of quality from physical to virtual goods. This means that consumers would naturally associate the sign "Glashütte ORIGINAL" with a certain product quality and authenticity, even in the case of virtual products.
• This image transfer enables consumers to perceive the claimed virtual goods and services as a logical extension of Glashütte's established reputation for watch products. The associated expectations of quality and reliability are intended in particular to strengthen consumer confidence in the value of the virtual products.
• In such a case, the sign in question would not be perceived by consumers as an indication of the commercial origin of virtual products. The trade mark therefore lacked distinctive character. According to the Board of Appeal, this could also not be established in the individual case by a rather common stylisation of the word "Glashütte".   

Practical tip

Thanks to technologies such as augmented reality (AR) and virtual reality (VR), real and virtual worlds are merging in people's everyday lives. For some time now, goods and services in the fashion and luxury goods sector in particular have therefore been offered both over-the-counter in shops and in virtual environments in order to meet the new needs of consumers. Hybrid commerce is playing an increasingly important role and is already opening up considerable potential for attracting new customers.

However, as the decision of the Board of Appeal shows, caution is still required when registering trade marks for virtual goods and services. If certain perceptions of value or quality are associated with the physical goods, these perceptions can in principle also be transferred to virtual products. Watches and watch accessories from Glashütte, for example, also have such a special value (see also the so-called Glashütte Regulation (GlashütteV), which has protected the designation of origin "Glashütte" for watches from this geographical area since 2022, see our insight). The possible transfer of the positive reputation and image to virtual products can ultimately lead to the trade mark being refused protection due to a lack of distinctiveness. However, as the distinctiveness of the trade mark depends heavily on the circumstances of the individual case, it is advisable to obtain precise information or advice in advance.