Düsseldorf, January 31, 2024 – The name “Kölner Dom” (Cologne Cathedral) cannot be protected as a trademark on souvenir articles. This was the ruling handed down by the Federal Court of Justice (Bundesgerichtshof – BGH) published on January 12, 2024 (case ID: I ZB 28/23). This means that the application by the “Hohe Domkirche zu Köln”, the owner of the world-famous Cologne landmark, has failed in the court of last instance.
The “Domkirche”, which is responsible for the cathedral’s upkeep, filed an application to register a trademark with the German Patent and Trademark Office (DPMA) in 2018. The DPMA rejected the application due to lack of distinctiveness insofar as the application was directed at souvenir articles. The Federal Patent Court (Bundespatentgericht – BPatG) upheld the DPMA’s decision shortly afterwards.
Explaining its recent judgment, the Federal Court of Justice stated that the name “Kölner Dom” is understood as a descriptive indication and not as proof of origin. The federal judges are of the opinion that a person reading the labelling on one of the many souvenir articles will not generally see it as an indication of the origin of the goods, but merely as a reference to the famous building. An important criterion for trademark registration is therefore not fulfilled. According to the Federal Court of Justice, since there are souvenir shops from various suppliers around places of interest, it cannot be assumed that goods labelled “Kölner Dom” originate from the “Hohe Domkirche zu Köln”.
This decision by the Federal Court of Justice deviates in part from the judgment by the European Court of Justice (ECJ) on the protectability of the mark “Neuschwanstein” from 2018 (judgement of September 7, 2018 – C-488/16 P). In this case, the ECJ upheld the decision of the European Union Intellectual Property Office (EUIPO), which granted protection to the “Neuschwanstein” mark for souvenir articles as well.
“The ECJ ruling was considered extremely significant by some in the legal world at that time. It indicated that not every supplier would be allowed to market souvenir articles bearing the names of famous buildings. In view of this, it will be fascinating to see whether the recent ruling by the Federal Court of Justice in the ‘Kölner Dom’ case has finally brought some clarity,” says Dr. Reinhard Fischer, attorney-at-law and partner at Cohausz & Florack.
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