IP lawyers like beer, at least this one does.  So, we also like to write about beer trademarks.  Here’s one you can drink to.  The Irish Times recently reported that the city of Munich has filed a new European Union trademark application for OKTOBERFEST, hoping, we assume, to profit from licensing the name to the countless Octoberfest celebrations all over the world.  The Irish Times reported that

A successful application would oblige organizers of alternative Oktoberfests around the world – from Dublin to Shanghai – to buy a license from the city of Munich or face legal action.

The license application with EUIPO, Europe’s intellectual property office, covers all aspects of Oktoberfest: the festival itself, beer and other drinks, soap, toothpaste, paper products and all forms of advertising and Oktoberfest-related tourism. Publicans, hoteliers, and even travel agents who advertise using the Oktoberfest name would, in future, only be allowed do so for a fee.

What’s interesting is that this was Munich’s second attempt at trying to register OKTOBERFEST with the EU.  The first attempt, in 1999, ended in failure because the European Union Intellectual Property Office found the trademark to be “not distinctive.”

What does this mean?  Trademarks must be distinctive, that is, they must be unique identifiers of the source of goods and services.  The City of Munich is saying that when someone sees the term OKTOBERFEST used, for example, on a billboard advertising a beer festival, they immediately identify Munich as the source.  if the brand identifies not the source of the good or service but, generically, the good or service itself then it is said to be “generic”.  Generic terms cannot act as trademarks.  CELLOPHANE and ESCALATOR are two examples of trademarks, which have become genericized and no longer act as trademarks.

Has OKTOBERFEST become genericized?  That’s probably what the EU trademark examiner had in mind in 1999.  The city of Munich sees it differently and believes that since 1999 the trademark has acquired distinctiveness.  We’re not sure how Munich is going to prove that.  A Google search for the term generates over 30,000,000 hits suggesting that OKTOBERFEST may have become part of the world’s lexicon when it comes to beer festivals.  The OKTOBERFEST registrations in the U.S. Patent and Trademark Office  appear to support that conclusion. There are 44 registered trademarks in the PTO database containing the term OKTOBERFEST.  We looked at a small sample and in each case the applicant was required to disclaim the term OKTOBERFEST meaning that the term is so descriptive or generic that the owner can not claim trademark rights in the word alone.

This brings us the question of whether the Irish Times has overstated the impact of Munich’s trademark should it be issued this time around.  No, it won’t have world-wide effect.  An EU trademark is only enforceable in the EU.  Munich would have to register the term in the each country to “oblige organisers of alternative Oktoberfests around the world – from Dublin to Shanghai – to buy a licence from the city of Munich.”  Good luck with that!

— Adam G. Garson, Esq.