You are on page 1of 14

OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET

(TRADE MARKS AND DESIGNS)
The Boards of Appeal

UNOFFICIAL DOCUMENT FOR INFORMATION PURPOSES ONLY

Language of the case: German
DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

2

DECISION

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

3

of the First Board of Appeal
of 9 July 2013
In Case R 125/2012-1
Constantin Film Produktion GmbH
Feilitzschstr. 6
DE-80802 Munich
Applicant /
Germany
Appellant
represented by HOFSTETTER, SCHURACK & PARTNER, PATENT- UND
RECHTSANWALTSKANZLEI,
PARTNERSCHAFT,
Balanstrasse 57,
DE-81541 Munich, Germany
v
‘Karl May’ Verwaltungs- und Vertriebs- GmbH
Bernhard Schmid
Schützenstr. 30
DE-96047 Bamberg
Germany

Trade mark proprietor /
Respondent

represented by ADVONORIS RECHTSANWÄLTE PEJMAN & PARTNER,
Arminiusstr. 2, DE-90402 Nuremberg, Germany
APPEAL relating to Invalidity Proceedings No 4519 C (Community trade mark
No 2 735 017)
THE FIRST BOARD OF APPEAL
composed of Th. M. Margellos (Chairperson),
Ph. von Kapff (Member)

S. Martin (Rapporteur)

Registrar: P. López Fernández de Corres
gives the following

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

and

4

Decision
Summary of the facts
1

By an application filed on 14 June 2002, ‘Karl May’ Verwaltungs- und VertriebsGmbH (‘the trade mark proprietor’) sought to register the word mark
WINNETOU
as a Community trade mark (‘the contested trade mark’). The Community trade
mark covers the following goods and services:
Class 3 – Perfumery, essential oils, cosmetics, hair lotions.
Class 9 – Films, in particular animated films, video films; photographic, cinematographic, optical,
weighing, signalling, checking (supervision) and teaching apparatus and equipment, electric
apparatus and instruments (included in class 9); apparatus for recording, transmission or
reproduction of sound, images or data, and data carriers therefor, recorded and unrecorded;
magnetic data carriers, recording discs, calculating machines, data processing equipment,
computers, computer programs, exposed films, including for cinematographic purposes.
Class 14 – Precious metals and their alloys and goods of precious metals or coated therewith
(included in class 14); nutcrackers of precious metal; jewellery, precious stones; imitation
jewellery, ornamental novelty badges; horological and chronometric instruments.
Class 16 – Paper, cardboard and goods made from these materials (included in class 16); stickers,
labels; printed matter; postage stamps; bookbinding material; photographs; stationery; adhesives
for stationery or household purposes; artists’ materials; paint brushes; office requisites (other than
furniture); instructional and teaching material (except apparatus); plastic materials for packaging
(included in class 16); printers’ type; printing blocks.
Class 18 – Goods made of leather and imitations of leather, namely bags and other containers not
specifically designed for the objects being carried, and small leather goods, in particular purses,
pocket wallets, key wallets and other goods made thereof (included in class 18); trunks and
travelling bags; umbrellas, parasols and walking sticks.
Class 21 – Household or kitchen containers (not of precious metal or coated therewith); utensils
(included in class 21); combs and sponges; brushes (except paint brushes); brush-making
materials; articles for cleaning purposes; articles made of glass, porcelain and earthenware for
household and kitchen purposes, works of art made of glass, porcelain and earthenware.
Class 24 – Textiles and textile goods (included in class 24, other than for bedding, namely
cushions, blankets, quilts and sleeping bags); bed and table covers.
Class 25 – Clothing, footwear, headgear.
Class 28 – Games, playing cards, toys, including electronic toys, decorations for Christmas trees;
gymnastic and sporting articles (included in class 28).
Class 29 – Meat, fish, poultry and game, and goods made thereof; preserved, dried and cooked
fruits and vegetables; jellies, jams, fruit sauces.
Class 30 – Coffee, tea, cocoa, bread, pastry and confectionery, in particular gingerbread, fruit
bread, ices, honey; spices, confectionery and chocolate goods.
Class 39 – Transport of persons.

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

5
Class 41 – Events for entertainment, cultural and sporting purposes, rental of films and sound
recordings; film production and film showings; photography; entertainment; events in leisure
parks and holiday parks; holiday camp services; providing campground facilities.
Class 42 – Exploitation of industrial property rights.
Class 43 – Accommodation and catering for guests.

2

The contested trade mark was published in Community Trade Marks Bulletin
No 30/2003 of 7 April 2003, registered on 16 September 2003 and extended on
10 June 2012.

3

On 14 June 2010, Constantin Film Produktion GmbH (‘the applicant’) filed a
request for invalidity of the Community trade mark due to the existence of
absolute grounds for invalidity, based on Article 52(1)(a) CTMR in conjunction
with Article (7) CTMR. Page 3 of the grounds for the request in particular reads:
‘According to the case-law of the ECJ, the eligibility of a trade mark for
registration is precluded by Article 7(1)(b) CTMR if the trade circles targeted
perceive the sign as descriptive with regard to the goods and services for which
the trade mark is registered. [...] According to the European case-law relating to
the trade mark application ‘map&guide’ [...], trade marks which refer to the
content of the goods or services designated by them are devoid of distinctive
character [...]’.

4

By decision of 13 December 2011 (‘the contested decision’), the Cancellation
Division refused the request for invalidity and ordered the applicant to bear the
costs of the proceedings. The decision was based on the following grounds in
particular:

The goods and services, up to those in class 42, are aimed at the average
consumer. The services of class 42 are aimed at traders. Depending on the
nature of the goods or services, the level of attention paid by consumers is
high or average. As ‘WINNETOU’ cannot be assigned to any language
within the European Union, account must be taken of the entire public within
the European Union.

The assessment of the trade mark by courts in Germany is not decisive, since
the Office is not bound by this.

The applicant has not submitted any documents showing that trade circles in
Germany understand the trade mark as being descriptive. The parties agree
that ‘WINNETOU’ is a fictional person.

The applicant is of the opinion that the fictional person may constitute the
content of the claimed media products, such as books or sound carriers for
example, and thus directly describes the content of the media. However,
according to the practice of the Office, names are distinctive per se.

Even if the fictional character ‘WINNETOU’ were to be recognised as a
magnanimous Native American chieftain, this does not constitute a statement
as to the content of a data carrier or a medium, since neither ‘WINNETOU’
nor ‘magnanimous Native American chieftain’ concerns a distinct genre.

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

6

No connection was proven in relation to ‘WINNETOU’ as an indication of
quality for goods having no thematic content. It is therefore not apparent that
‘WINNETOU’ is used as an indication of quality for all kinds of goods
having a ‘typical Native American and Wild West look’.

The trade mark is therefore not descriptive.

In addition, there are no indications of a lack of distinctive character.

The ground for invalidity under Article 7(1)(c) CTMR cited in the applicant’s
counterplea is not taken into consideration. Grounds for invalidity cannot be
broadened in the course of proceedings. Finally, the examination practice
does not, however, reveal any differences between the grounds for refusal
under Article 7(1)(b) and (c) CTMR.

5

The applicant filed a notice of appeal against the contested decision on
17 January 2012 and submitted grounds therefor on 11 April 2012. It asks that the
contested decision be annulled, the request for invalidity of the Community trade
mark be allowed and the trade mark proprietor be ordered to bear the costs of
both sets of proceedings.

6

The appeal was remitted to the Board of Appeal pursuant to Article 62 CTMR
after revision was refused by the Cancellation Division.

7

The trade mark proprietor submitted observations on the grounds of appeal on
22 June 2012. It asks that the appeal be dismissed.

8

Arguments of the parties
The applicant essentially based its appeal on the following grounds:

In Germany, ‘WINNETOU’ has become the epitome of the ‘noble Native
American chieftain’. This was confirmed by the German Federal Patent
Court (BPatG) (file reference: 32 W (pat) 261/99) and by the German
Federal Court of Justice (BGH) (I ZB 19/00). The Cancellation Division did
not examine this evidence.

In referring to these judgments, the applicant concurs with the evaluation of
the facts by the BPatG and the BGH. In the judgments, the court specialising
in trade mark matters and the highest court in the Federal Republic of
Germany evaluate the German public’s actual opinion of the term
‘WINNETOU’. It is a matter of the expert knowledge of the judges of the
two highest courts in Germany in trade mark matters, who, on account of
their experience and expert knowledge, are in a position to assess how the
trade mark word is understood in German trade circles. It is not a question of
the decisiveness of the national case-law, but rather of the evidence of the
public’s current understanding.

A Wikipedia extract and an extract from the online newspaper ZEIT are also
attached as evidence of the public’s understanding.

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

7

9

According to the EGC’s judgment (see judgment of 8 June 2005, T-315/03,
‘Rockbass’), registrations in Member States may be used in the analysis of
facts.

According to the BPatG’s judgment (page 4), the designation ‘WINNETOU’
evokes certain perceptions among the public regarding the genre and content
of printed matter designated thereby or regarding the subject of services
which are aimed at exploiting works based on said designation. Therefore,
the Community trade mark is also to be denied eligibility for registration.

It is conceivable, for example, that a consumer in a bookshop asks for books
about ‘WINNETOU’. The term is thus descriptive.

The trade mark proprietor essentially submitted the following observations in this
respect:

The appellant has not submitted any evidence that the term ‘WINNETOU’ is
understood in Germany in a descriptive manner. The judgments of the BGH
and BPatG do not properly reflect the Germany public’s actual
understanding.

The documents now submitted by the applicant are late. Regardless of this,
those documents merely show that ‘WINNETOU’ is a fictional person (like
‘James Bond’ or ‘Harry Potter’). The alleged development away from a
personal name or from a fictional person towards a generally descriptive
factual indication is not sufficiently substantiated by the applicant.

Terms are only descriptive as possible indicators of the content of data
carriers if they represent a genre or a content category. With regard to
‘WINNETOU’ or ‘magnanimous Native American chieftain’, this is not the
case.

Reasons
10 The appeal complies with Articles 58, 59 and 60 CTMR and Rule 48 CTMIR. It
is therefore admissible.
11 It is partly well founded. The sign ‘WINNETOU’ is distinctive and not
descriptive within the meaning of Article 7(1)(b) and (c) CTMR in respect of
goods and services which are not connected to a ‘noble Native American
chieftain’ or the book character of the same name. However, with regard to the
goods which have a connection to ‘WINNETOU’, in particular those goods in the
field of literature, radio and television, the contested trade mark is certainly to be
cancelled under Article 52(1)(a) CTMR in conjunction with Article 7(1)(b)
and (c) CTMR.
Scope of the cancellation request
12 Firstly, the scope of the cancellation request must be determined.
13 In this regard, the Cancellation Division stated: ‘The ground for invalidity under
Article 7(1)(c) CTMR cited in the applicant’s counterplea is not taken into
consideration. [...] However, the grounds for invalidity cannot be broadened

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

8

further in the course of proceedings for the purposes of guaranteeing proper
proceedings and with a view to the interests of the proprietor of the contested
Community trade mark’.
14 On the form, the applicant based its request on Article 52(1)(a) in conjunction
with Article 7 CTMR. In the grounds for the request, the applicant invokes the
grounds for refusal of Article 7(1)(b) and (c) CTMR (cf. para. 3). Although, the
applicant confuses the conditions of letters (a) and (b) and fails to clearly separate
the two grounds for refusal from one another, it expressly invokes Article 7(1)
(b) CTMR and refers to distinctive character (see para. 3 above). In addition,
however, it also makes observations regarding the descriptive character of the
contested trade mark. From the grounds, it appears that the applicant claims both
grounds for refusal.
15 Thus it must be examined whether grounds for refusal exist within the meaning of
Article 7(1)(b) and (c) CTMR.
Article 52(1)(a) CTMR in conjunction with Article 7(1)(c) CTMR
16 Under Article 7(1)(c) CTMR, trade marks which consist exclusively of signs or
indications which may serve, in trade, to designate the kind, quality, quantity,
intended purpose, value, geographical origin or the time of production of the
goods or of rendering of the service, or other characteristics of the goods or
service, shall not be registered.
17 Refusal of a trade mark on the grounds that it is descriptive is already justified if,
from the viewpoint of the public addressed, there is a sufficiently clear and
specific relationship between the sign applied for and the goods or services
claimed (see judgment of 27 February 2002, T-106/00, ‘Streamserve’, para. 40,
confirmed by order of 5 February 2004, C-150/02 P, ‘Streamserve’). Whether a
sign is descriptive can therefore only be assessed in relation to the goods and
services claimed and with respect to the understanding that the relevant trade
circles have of it (see judgment of 12 February 2004, C-363/99, ‘Postkantoor’,
para. 56).
Relevant consumer
18 The Cancellation Division determined that the claimed goods and services of
classes 3, 9, 14, 16, 18, 21, 24, 25, 28, 29, 30, 39, 41 and 43 are aimed at average
consumers. In contrast, the services of class 42 are aimed, in the Cancellation
Division’s view, at traders. Depending on the nature of the goods or services, the
public’s level of attention will be high or will be that of average consumers, who
are reasonably well-informed, observant and circumspect.
19 The parties made no observations in this respect. The Board shares the view of
the Cancellation Division in so far as the goods and services claimed, apart from
those of class 42, are at the very least also aimed at general consumers. However,
the goods and services may also be aimed at specialist consumers (for example
distributors).
20 A trade mark must be refused if a ground of non-registrability obtains in only part
of the European Union, pursuant to Article 7(2) CTMR. In the present case,
account must essentially be taken of the view of all consumers of the European

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

9

Union. While ‘WINNETOU’ cannot be assigned to a specific language or region
of the European Union, as the applicant essentially argues that the contested trade
mark is descriptive in Germany and the sign was not deemed eligible for
protection by the BGH, the Board will primarily take into account the view of
German-speaking consumers.
21 Pursuant to Article 7(2) CTMR, a Community trade mark is to be refused
registration under Article 7(2) CTMR where it is descriptive or is not distinctive
in one of the official languages of the European Union (see judgment of
19 September 2002, C-104/00 P, ‘Companyline’, para. 40).
Descriptive character
22 It is not disputed between the parties that the sign ‘WINNETOU’ designates the
main character of a series of novels by the author Karl May.
23 It also follows from the judgments of the German Federal Court of Justice (BGH)
and of the Federal German Patent Court (BPatG) cited by the applicant that the
German consumer understands ‘WINNETOU’ as a fictional, noble and good
Native American chieftain.
24 Since 1893, there have been, among others, the books ‘Winnetou I’,
‘Winnetou II’, ‘Winnetou III’ and ‘Winnetou IV’. As well as these, since the
1960s, there have been records, cassettes, films and theatre performances (in
particular at open-air festivals) (for example ‘Winnetou’ part 1 [Apache Gold],
part 2 [Last of the Renegades], part 3 [The Desperado Trail], ‘Winnetou und das
Halbblut Apanatschi’ [Half-Breed], ‘Winnetou und sein Freund Old Firehand’
[Thunder at the Border], ‘Winnetou und Shatterhand im Tal der Toten’ [Winnetou
and Shatterhand in the Valley of Death], etc.). These audio plays or theatrical
performances do not represent a direct film version of Karl May’s books, but
rather are adaptations in a specific genre in which the action takes place in the
Wild West and in which Winnetou plays the main role as a noble Native
American.
25 By a decision of 5 December 2002 (a few months after the application date of the
contested trade mark), the BGH ruled that the designation ‘Winnetou’ is
descriptive in Germany of ‘printed matter; film production; publishing of books
and magazines’ (file reference: I-ZB 19/00; GRUR 2003, 342). The BGH states
the following in particular:
‘According to the findings of the German Federal Patent Court, the name
‘Winnetou’, at the time of registration, had already developed into a synonym
for a righteous Native American chieftain on account of the familiarity of
the character from the novels by Karl May. That fact is the basis for the name’s
suitability to be able to serve as a factual indication of the content or subject
of the disputed goods or services which concern this book character. The
appeal on a point of law unsuccessfully objects to this with the complaint that
the German Federal Patent Court could not have arrived at such findings on
the basis of its own expert knowledge. The assessment by the German Federal
Patent Court corresponds [...] to general experience and cannot be objected to
on legal grounds. […]

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

10

The assessment by the German Federal Patent Court rightly refers not only to
the goods in suit, namely ‘printed matter’, but also to the services in question.
The reason for this is that the descriptive conceptual content of the name
‘Winnetou’ relates not only to the works as such, but equally to the services by
means of which the works are produced too. This is because the public will
understand the slogan-like meaningful content inherent in the book character
‘Winnetou’ as a generally understandable description of the content of the
production and, without further consideration, will relate to the services
themselves for which the trade mark was registered (emphasis added).
26 As a result, the German Courts assume that the name of a book character is then
at least directly descriptive of the content of publications, and thus connected
goods and services, if the character is familiar and has developed into a term for a
specific character.
27 Although, as the Cancellation Division correctly states, the Board is not bound by
the case-law of national courts, since, in this case, a higher national court has
ruled on the matter that the term is descriptive in Germany, the Community trade
mark must also be assessed as ineligible for protection under Article 7(2) CTMR
in respect of goods and services connected to books, radio and television.
28 For the German public, Winnetou directly refers to the content of the goods in
respect of the following goods:
Class 9 – Films, in particular animated films, video films; magnetic data carriers, recording discs,
exposed films, including for cinematographic purposes.
Class 16 – Printed matter; bookbinding material; photographs.

29 According to German case-law, the German consumer will assume that
‘Winnetou’ merely describes that a ‘Winnetou’ film, a ‘Winnetou’ book or the like
is concerned.
30 The same applies in respect of the claimed services in classes 41 and 42, namely
Events for entertainment, cultural and sporting purposes, rental of films and sound recordings;
film production and film showings; photography; entertainment; events in leisure parks and
holiday parks; holiday camp services; providing campground facilities;
Exploitation of industrial property rights.

31 In this respect, the consumer will assume that ‘WINNETOU’ films are produced,
‘WINNETOU’ leisure parks are concerned, ‘WINNETOU’ industrial property
rights are exploited etc.
32 For merchandising products too, the consumer will assume that ‘WINNETOU’
merely describes the fact that the products are simply connected to the films or
the book character. Nowadays, merchandising products are common in all
conceivable fields (cf., in detail, decision of 30 June 2008, R 1469/2005-1,
‘WORLD CUP GERMANY’, para. 39 et seq.).
33 Thus the following goods are wholly typical merchandising products:

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

11
Class 14 – Precious metals and their alloys and goods of precious metals or coated therewith
(included in class 14); jewellery, precious stones; imitation jewellery, ornamental novelty badges;
horological and chronometric instruments.
Class 16 – Paper, cardboard and goods made from these materials (included in class 16); stickers,
labels; postage stamps; stationery.
Class 18 – Goods made of leather and imitations of leather, namely bags and other containers not
specifically designed for the objects being carried, and small leather goods, in particular purses,
pocket wallets, key wallets and other goods made thereof (included in class 18); trunks and
travelling bags; umbrellas, parasols and walking sticks.
Class 21 – Articles made of glass, porcelain and earthenware for household and kitchen purposes,
works of art made of glass, porcelain and earthenware.
Class 24 – Textiles and textile goods (included in class 24, other than for bedding, namely
cushions, blankets, quilts and sleeping bags); bed and table covers.
Class 25 – Clothing, footwear, headgear.
Class 28 – Games, playing cards, toys, including electronic toys, decorations for Christmas trees;
gymnastic and sporting articles (included in class 28).

34 They are typically sold in souvenir shops, for example ‘WINNETOU’ clothing,
i.e. clothing that Winnetou wears or is connected to Winnetou; or ‘WINNETOU’
umbrellas, cups, toys (such as bow and arrows), table covers in the Native
American style, cases with the image of Winnetou, etc.
35 In addition, it is also conceivable for ‘WINNETOU’ ‘perfumery, essential oils,
cosmetics, hair lotions’ to be offered for sale as merchandising products.
36 The same applies for ‘calculating machines, data processing equipment,
computers and computer programs’. These too may indeed be offered for sale as
merchandising products, for example a souvenir pocket calculator or a
‘WINNETOU’ hand-held computer having corresponding games. ‘Photographic,
cinematographic, optical, weighing, signalling and checking (supervision)
apparatus and equipment, electric apparatus and instruments (included in class 9);
apparatus for recording, transmission or reproduction of sound, images or data,
and data carriers therefor, recorded and unrecorded’ may also be sold as
merchandising articles. For example, it is quite conceivable for disposable
cameras or video cameras to be sold at film festivals for recording the festivals.
37 Finally, specifically at Christmas time, it is possible for ‘WINNETOU’
‘nutcrackers of precious metal’ to be sold as merchandising articles. The
consumer will assume that the nutcracker is in the shape of a Native American
chieftain. ‘Household or kitchen containers (not of precious metal or coated
therewith); utensils (included in class 21); combs and sponges; brushes (except
paint brushes); brush-making materials; articles for cleaning purposes’ in class 21
may also be sold as merchandising articles, for example wooden bowls.
38 ‘Office requisites (other than furniture); plastic materials for packaging (included
in class 16); adhesives for stationery or household purposes; artists’ materials;
paint brushes’ in class 16 also represent possible merchandising articles, for
example souvenir writing pads or hole punches, brushes etc.

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

12

39 The foodstuffs claimed in classes 29 and 30 are likewise directly connected to
‘WINNETOU’. In this respect, ‘WINNETOU’ refers to the fact that the
foodstuffs are sold at festivals.
40 With regard to all of these merchandising goods, the consumer will assume that
they are merely ‘WINNETOU’ advertising products and will not deduce the
origin of the goods from the sign.
41 In this respect, the application is thus descriptive for German consumers, with the
result that the Community trade mark too must be cancelled to this extent.
42 Since the judgment of the BGH was handed down only a few months after the
application date, it is to be assumed that the ground for refusal was already
present at the time the Community trade mark was applied for.
43 In relation to ‘transport of persons’ and ‘accommodation and catering for guests’,
‘WINNETOU’ ultimately refers to the travel destination in Germany, namely the
festival.
44 With regard to the ‘instructional and teaching material (except apparatus)’ in
class 16 and ‘teaching apparatus and equipment’ in class 9, ‘WINNETOU’ refers
to the fact that teaching material is involved which illustrates the subject with the
help of Winnetou stories.
45 However, with regard to the goods that are primarily aimed at experts and that are
not connected to the character ‘Winnetou’, the films, books or festivals, the Board
cannot identify how the contested Community trade mark should be understood
as being descriptive.
46 Thus, ‘printers’ type; printing blocks’ in class 16 are highly specialised articles
which have no connection whatsoever to the character ‘Winnetou’. They are too
technical for them to be sold as merchandising products.
47

Consequently, registration is precluded in part by grounds for refusal within the
meaning of Article 52(1)(a) CTMR in conjunction with Article 7(1)(c) CTMR.

Article 52(1)(a) CTMR in conjunction with Article 7(1)(b) CTMR
48 With regard to the goods and services for which it is descriptive, the trade mark is
also devoid of distinctive character within the meaning of Article 7(1)(b) CTMR.
49 For a trade mark to possess distinctive character for the purposes of Article 7(1)
(b) CTMR, it must serve to identify the goods or services in respect of which
registration is applied for as originating from a particular undertaking. Therefore,
both distinctive character and suitability to perform the function of indicating
origin are necessary.
50 As shown, the consumer will assume, in the case of goods and services which are
connected to a magnanimous Native American chieftain or the book character,
that the trade mark describes the content and/or the purpose of the goods and
services. He will merely believe that the trade mark is a promotional designation,
but will not understand ‘WINNETOU’ as an indication of origin.

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

13

51 However, in respect of the aforesaid goods, which are in no way connected to the
‘Winnetou’ series of books and films, the trade mark is devoid of the required
connection, namely for ‘printers’ type; printing blocks’ in class 16.
52 The consumers in the union who do not know ‘Winnetou’ will, as shown, see this
as a distinctive fanciful designation anyway.
53 Consequently, registration is precluded by grounds for refusal within the meaning
of Article 52(1)(a) CTMR in conjunction with Article 7(1)(b) CTMR.
Conclusion
54 The appeal is successful in part since grounds for refusal exist within the meaning
of Article 52(1)(a) CTMR in conjunction with Article 7(1)(b) and (c) CTMR in
conjunction with Article 7(2) CTMR with regard to all of the goods and services
except ‘printers’ type; printing blocks’ in class 16.
55 In respect of all the claimed goods and services except ‘printers’ type; printing
blocks’ in class 16, the contested decision must therefore be annulled and the
contested Community trade mark cancelled. In respect of ‘printers’ type; printing
blocks’ in class 16, however, the appeal must be dismissed and the Community
trade mark remains registered.
Costs
56 Since the applicant was partly successful in its appeal, for reasons of equity
within the meaning of Article 85(2) CTMR, each party shall bear its own costs in
the appeal proceedings and in the cancellation proceedings. The decision on costs
in the contested decision is annulled.

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

14

Order
On those grounds,
THE BOARD
hereby:
1

Annuls the contested decision with respect to all of the claimed goods
and services and cancels Community trade mark No 2 735 017 to this
extent except for ‘printers’ type; printing blocks’ in class 16.

2

Orders each party to bear its own costs in the appeal and cancellation
proceedings.

Th. M. Margellos

S. Martin

Registrar:

P. López Fernández de Corres

DECISION OF 9 JULY 2013 – R 125/2012-1 – WINNETOU

Ph. von Kapff