The Glashutte Case T-1163/23

Another Interesting case with regards to metaverse and virtual goods has been issued on the 11/12/2024, this time by the General Court.

In this case the applicant filed an application in order to register the Figurative trademark Glashutte for virtual watches in classes 9, 35 and 41.  

The Town of Glashutte is a German Town in Saxony and is  famous for manufacturing high quality watches. This was perceived by the Board Of Appeal as a well known fact. Consequently the Board of Appeal considered that the town of Glashütte,  is perceived as being well known for the manufacture of high-quality watches.

The Applicant raised , among others, the issue that consumers do not  perceive virtual goods and services in the same way as they perceive the corresponding real goods and services. The opinion of the General Court was completely different.

In paragraph 41 of its decision the General Court points out  the following “ in particular, the assessment of the distinctive character of a mark in relation to virtual goods and services in respect of which registration is sought, it must be held that the relevant public will, in principle, perceive virtual goods and services in the same way as it perceives the actual corresponding goods and services. The nature of the goods and services at issue is therefore decisive. Thus, if virtual goods merely represent actual goods or if virtual goods represent or emulate the functions of actual goods, or if virtual services emulate the functions of actual services in the virtual world, a transfer of the relevant public’s perception of the actual goods and services to the corresponding virtual goods and services may, in principle, be established. The possibility of such a transfer must nevertheless be assessed on a case-by-case basis, taking into account the particular nature of the virtual goods and services at issue”

What we should keep from this decision is that there is a  presumption that the public confronted with virtual goods will directly perceive the trade mark applied for as a logical extension of the reputation of the physical goods, however the General Court leaves a window open that allows to the applicant to rebut this presumption.

For the record the registration of the trademark “Glashutte originals” was refused at every instance due to luck of distinctiveness as per article 7.1.b of the EUTMR.