WINNETOU mark not distinctive, rules court

Germany

In Zweites Deutsches Fernsehen v Karl May Verwaltungs-und Vertriebs- GmbH (I ZB 19/00), the Federal Supreme Court has upheld the part-cancellation of the German registered trademark WINNETOU so that it no longer covers film production or publication and editing of books, magazines and printed matter. The court held that the mark was not sufficiently distinctive and therefore was not capable of identifying the origin of these services.

Karl May Verwaltungs-und Vertriebs is a German company that holds intellectual property rights in the works of German author Karl May. One of May's most famous characters is a Native American chief called 'Winnetou' and Karl May Verwaltungs registered the name as a trademark in Germany in 1996. Zweites Deutsches Fernsehen (ZDF), a German television station, brought an application for cancellation of the WINNETOU mark. ZDF argued that the mark is not distinctive because the German public no longer associate the name 'Winnetou' with May's fictional character. It has, contended ZDF, become synonymous with Native American culture in general and specifically with the concept of a noble Native American chief. The lower courts agreed with ZDF and the case was appealed to the Supreme Court.

The Supreme Court upheld the lower courts' decisions and, pursuant to Section 8 of the German Trademark Act, ordered the part-cancellation of the mark. The court noted that May's works featuring the 'Winnetou' character went out of copyright in 1963 and since that time, a number of publications and films have featured a noble Native American chief called 'Winnetou'. It concluded that the German public do not understand the term 'Winnetou' as a reference of origin, they see it as a description of a type of person, namely a noble Native American chief. 'Winnetou', said the court, has become a well-known name that cannot distinguish Karl May Verwaltungs's services in the fields of publication and film production from those of any other company.

Stephan N Schneller and Henry Lauf, Maiwald Patentanwalts GmbH, Munich

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