## Facts

- Windsurfing Chiemsee Produktions-und Vertriebs GmbH (WSC) marketed sportswear using signs containing the word “Chiemsee,” a geographic name referring to a lake in Bavaria.
- WSC registered several figurative marks in Germany that incorporated “Chiemsee” for sportswear; the goods were designed near the lake but not manufactured there.
- Boots-und Segelzubehör Walter Huber and Franz Attenberger sold sportswear in the same region using signs that also contained “Chiemsee,” with different figurative elements.
- WSC brought proceedings alleging infringement and likelihood of confusion and the national court questioned whether the “Chiemsee” registrations were valid.
- A German regional court referred questions to the European Court of Justice (ECJ) for interpretation of EU rules on refusal of registration for descriptive geographic terms and the exception for acquired distinctiveness.

## Issues

1. When must a mark consisting exclusively of a geographic name be refused registration because it may serve in trade to designate geographic origin?
2. Whether refusal depends on a present consumer association between the place and the relevant goods, or also on likely future descriptive use.
3. What must be shown for a geographic name to acquire distinctive character through use so that it is registrable despite descriptiveness.

## Decision

- The ECJ held that refusal for descriptiveness covers geographic names that currently designate origin and names liable to be used in the future by traders as an indication of geographic origin for the goods.
- Where a place is not presently associated with the goods, the competent authority must assess whether it is reasonable to assume the name is capable, in the minds of the relevant public, of designating geographic origin for that category of goods.
- The ECJ clarified that a geographic association may exist even if the goods are not manufactured in the place.
- The ECJ held that a geographic name may be registered if, through use, it has come to identify the goods as originating from a particular undertaking and thus to distinguish them from competitors’ goods.
- For acquired distinctiveness, the authority must make an overall assessment of evidence (including market share, intensity, geographic spread and duration of use, and the proportion of relevant consumers who identify the goods as coming from one undertaking because of the mark).
- The ECJ left application of these tests to the national court deciding validity and infringement.

## Legal Principles

- A sign is excluded from registration when it consists exclusively of indications that may serve in trade to designate geographic origin; the rule protects the public interest in keeping descriptive indications available to all traders.
- Geographic-name descriptiveness is not limited to places already famous or known for the goods; the key inquiry is whether the name is, or may become, capable of designating geographic origin for the goods to the relevant public.
- In evaluating whether a geographic name is descriptive, relevant considerations include the public’s familiarity with the place name, the characteristics of the place, and the relationship between those characteristics and the goods.
- A descriptive geographic term may become registrable if it has acquired distinctiveness through use, meaning the relevant public primarily perceives it as indicating commercial origin from a particular undertaking.
- Once acquired distinctiveness is proven, registration standards may not be tightened merely because the term is geographic; the assessment turns on evidence of consumer identification in the territory for which registration is sought.

## Conclusion

The ECJ interpreted EU trade mark law to bar registration of geographic names that function, or are reasonably likely to function, as origin designations for the relevant goods, while allowing registration where use has produced acquired distinctiveness shown by evidence that consumers identify the term with a single commercial source in the relevant territory.


Windsurfing Chiemsee Produktions-Und Vertriebs GmbH v. Boots-Und Segelzubehör Walter Huber (Joined Cases C-108/97 & C-109/97), 1999 E.T.M.R. 585 (ECJ 1999)