On December 11, 2024, the First Chamber of the General Court issued a significant ruling in a trademark dispute involving Glashütter Uhrenbetrieb GmbH in Glashütte, Germany, and the EU Intellectual Property Office (EUIPO). The core of the case revolves around the company’s application to register a figurative trademark for Glashütte ORIGINAL. However, the application faced an absolute refusal due to a lack of distinctiveness, leading to this court decision.

Glashütter and Its Place in Watchmaking

Glashütter Uhrenbetrieb GmbH is a German luxury watchmaker known for its precision timepieces. The company is based in Glashütte, a town with a long history of fine watchmaking. It is part of the Swatch Group and sells watches under the “Glashütte Original” name. Because Glashütte is widely recognized as a mark of craftsmanship, any attempt to register it as a trademark must overcome the challenge of proving distinctiveness.

In trademark law, distinctiveness is assessed with consumer perception as the key criterion. In this case, the court found that “Glashütte” is already strongly associated with high-quality watchmaking, making it difficult for Glashütter Uhrenbetrieb to claim exclusivity over the term for virtual products.

The brand’s background provides context for why the trademark was denied and raises broader questions about how established reputations in physical goods apply to virtual products.

Trademark Application and Initial Rejection

Glashütter Uhrenbetrieb submitted its application for trademark registration on July 1, 2022. The application covered a wide range of products and services, including downloadable virtual goods related to watches. On February 13, 2023, the examiner rejected the application, citing Article 7(1)(b) of Regulation (EU) 2017/1001. This article states that trademarks lacking distinctiveness cannot be registered.

Appeal and EUIPO’s Ruling

Following the rejection, Glashütter Uhrenbetrieb appealed the decision. However, on September 29, 2023, the Board of Appeal upheld the denial, determining that the trademark lacked distinctiveness. They noted that a significant portion of the German public associates Glashütte with high-quality watchmaking, implying that even virtual products must align with this reputation. As a result, the mark was deemed non-distinctive.

Arguments

The applicant argued that while the city of Glashütte is known for high-quality watchmaking, this reputation does not extend to virtual products or services. They asserted that tangible watches and their digital counterparts are fundamentally different, claiming there was no logical basis for applying the same distinctiveness standard to both.

After all, a virtual watch can’t exactly tick the same boxes as a real one.

The court highlighted that the distinctiveness of a trademark involves identifying the origin of products and differentiating them from others in the market. The court pointed out that a trademark must not only capture attention but also allow customers to recognize the source. If it doesn’t “watch” out for this, it risks being viewed as just another timepiece without a face.

Court’s Findings

The court agreed with the EUIPO, affirming that the name Glashütte is indeed well-known for quality watches. They recognized that the public, particularly in Germany, perceives the term “original” as a reflection of authenticity. The Board evaluated the public’s understanding, noting that it spans both casual consumers and industry professionals who focus on watches and their accessories, whether physical or virtual.

The court also discussed how the public would likely view the proposed trademark as reflecting the long-standing reputation of Glashütte in watchmaking while serving as promotional messaging rather than a unique commercial identifier. After all, you can’t simply put the “clock” on a name and expect it to be distinctive.

Final Ruling

In the end, the court ruled that the trademark application should be denied. The “Glashütte ORIGINAL” mark failed to provide a distinctive identity for the virtual products offered by Glashütter Uhrenbetrieb. Consequently, the court dismissed the appeal and ordered Glashütter Uhrenbetrieb to pay the legal costs incurred during the proceedings.

This ruling is interesting as we enter an area that is more and more geared towards virtual items, it is important to determine how brands can protect their virtual products.

Conclusion and Implications

This ruling highlights the challenges brands face when extending trademarks from physical to virtual goods. The court’s decision illustrates that a reputation for quality in tangible products does not automatically confer distinctiveness in the digital space. Companies must craft their trademarks carefully to ensure they communicate a clear and unique brand identity. Otherwise, they risk being left in a virtual void.

In this case, the judges were clear. If you want to make time in the virtual world, you need a name that can do the ticking!

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