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magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; recorded image and sound ... downloadable sound and image files; audio books; podcasts; data processing equipment, computer and computer software ... The word elements of the sign applied for consisted of the definite ...
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OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET (TRADE MARKS AND DESIGNS) The Boards of Appeal

UNOFFICIAL DOCUMENT FOR INFORMATION PURPOSES ONLY DECISION of the Fourth Board of Appeal of 28 May 2015

In Case R 2889/2014-4 Verlagsgruppe Droemer Knaur GmbH & Co. KG Hilblestr. 54 D-80636 Munich Germany Iny Klocke Elmar Wolrath Jupiterweg 2 D-85586 Poing Germany

Applicants/Appellants

represented by SKW Schwarz Rechtsanwälte, Wittelsbacherplatz 1, DE-80333 Munich, Germany

APPEAL relating to Community trade mark application No 1 291 7621

THE FOURTH BOARD OF APPEAL composed of D. Schennen (Chairperson and Rapporteur), E. Fink (Member) and L. Marijnissen (Member) Registrar: H. Dijkema gives the following

Language of the case: German DECISION OF 28 MAY 2015 – R 2889/2014-4 – DIE WANDERHURE

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Decision Summary of the facts 1

The authors of the novel of the same name and their publisher sought to register the word mark DIE WANDERHURE as a Community trade mark in respect of the following goods and services: Class 9 – Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; compact discs, DVDs and other digital recording media; recorded image and sound recording carriers; data carriers of all kinds with or without data; downloadable sound and image files; audio books; podcasts; data processing equipment, computer and computer software; downloadable electronic publications. Class 16 – Paper, cardboard and goods made from these materials, included in class 16, namely announcement cards (stationery), stickers (stationery), labels of paper, identification tags, storage containers, boxes, containers, placards, posters, display banners, advertising signs, packaging materials; printed matter, in particular printed publications, books, brochures, handbooks (manuals), loose-leaf binders, newspapers, leaflets, magazines and periodicals, and websites in printed form; photographs; thumbtacks (stationery); pads (stationery). Class 35 – Sale of books; collating, compiling, updating and maintaining of data, information and publications in databases, in particular e-books, e-newspapers, e-periodicals, e-magazines and other audio, video, image and text files; advertising; dissemination of advertising matter for others, in particular in printed matter, on the internet and via mobile telecommunications apparatus; rental of advertising space; rental of advertising time on communication media, including on digital networks; marketing and public relations for others, including on digital networks; wholesaling and retailing, in particular e-commerce in the field of printed and electronic publishing products; digitisation of documents and templates by means of optical character recognition (OCR) for others (office functions). Class 38 – Telecommunications; providing platforms or portals on the internet; providing access to information and computer programs on data networks, including the internet, including entry, search and navigation functions; providing access to databases containing electronic publications and publishing products on data networks, including the internet, including entry, search and navigation functions; electronic transmission of messages, images and text, in particular transmission of electronic publishing products, including e-books, e-magazines and e-newspapers; news agencies; providing chat lines, chat rooms and forums on the internet or other data networks. Class 41 – Education; providing of training; entertainment; sporting and cultural activities; publication of printed matter, including in electronic form, other than for advertising purposes; publishing services, other than printing.

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The examiner found that the sign was ineligible for protection, with reference to Article 7(1)(f) and 7(2) CTMR. The applicants opposed the objection with the submission of evidence.

DECISION OF 28 MAY 2015 – R 2889/2014-4 – DIE WANDERHURE

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3

The examiner refused the application by decision of 23.10.2014 pursuant to Article 7(1)(f) and 7(2) CTMR. The word elements of the sign applied for consisted of the definite article ‘DIE’, the term ‘WANDER’, which indicated movement from one place to another (wandering), and the term ‘HURE’ [whore], being a synonym for prostitute that is also used colloquially to refer to a person with frequently changing sexual partners, which was a vulgar and indecent expression and an offensive term of abuse. The application represented [sic] an expression which causes offence and is contrary to accepted principles of morality and thus to Article 7(1)(f) CTMR. The use of a word on [sic] a novel or film did not say anything about its social acceptance.

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The applicants filed a notice of appeal against this decision on 13.11.2014 and provided the grounds therefor on 23.02.2014. They submitted further evidence regarding the success of the novel of the same name and the film adaptation shown on German television station SAT 1 and Austrian television station ORF and regarding the broad media response. Large groups of people dealt with this title and with the content of the book and the film, which ruled out the classification of the sign applied for as obscene by these groups of people. They referred to a book written by a satirist, ‘Die schönsten Wanderwege der Wunderhaare’ [the most beautiful paths of the wonderful hair], the authorisation of which to ‘Weiterwandern’ [wander on] was the subject of a legal dispute before the Higher Regional Court (OLG) of Düsseldorf. Finally, they stated that the term ‘prostitute’ and its commercial activity were also no longer classified as immoral nowadays (Germany: Prostitution Act of 20.12.2001; Austria: Supreme Court (OGH) judgment from the year 2012). Reasons

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Pursuant to Article 7(1)(f) CTMR, trade marks which are contrary to public policy or to accepted principles of morality shall not be registered.

6

The examiner limited herself to emphasising the alleged vulgarity of the second word component without commenting on its first word component.

7

Although Article 7(1)(f) CTMR – unlike Article 7(1)(c) – does not require the sign applied for to consist ‘exclusively’ of indications that are accordingly ineligible for protection, the sign applied for must also be assessed as a whole in the case of Article 7(1)(f) CTMR. Article 7(1)(f) CTMR prevents, for example, the registration of signs which are pejorative, discriminatory, blasphemous or offensive, or which incite crimes or riots. In any case, such a statement which is contrary to accepted principles of morality must result from the semantic content of the word sign as a whole.

8

As can be seen from the documents submitted by the applicants (press reviews, etc.), the novel written by applicants 2 and 3 is about a young, wandering woman who provides her services in the 15th century and finally provides these services to the Council of Constance convened by the emperor, with the relevant public (not for the present trade mark application, but rather the medieval service users in question) consisting of clergymen. The reader of the novel is confronted with

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the theory that the wandering ladies of said type were at that time a distinct profession or, more precisely, a specialist group of service providers. This resulted in a lucrative popular success which the present Community trade mark application seeks to protect under trade mark law (in the relevant goods classes relating to printed matter, films and technical means for the distribution and presentation thereof). 9

It is correct that the broad popular success of the book and also of the film adaptation proves that the public does not take offence at the content of the book – and especially not at the term represented by its title. The city of Constance also does not have a problem with officially offering special walking tours ‘in the footsteps of the sign applied for’ (Annex 10 to the grounds of appeal). The term according to the application frequently causes amusement rather than disgust, for instance in the television programme (which is not suspected of promoting fornication) ‘Sag die Wahrheit’ [tell the truth] of regional broadcaster SWR, on which applicant 2 appeared with the assertion ‘Ich bin die Wanderautorin’ [I am the wandering author], and at the ‘Markenforum 2014’ symposium in Munich, where the discussion of the judgment of the OLG Düsseldorf mentioned in paragraph 4 caused pronounced amusement.

10 The term ‘Wanderdienstleistungserbringerin’ [female wandering service provider] does not exist in present linguistic usage. The social phenomenon described therein does not exist in the present day either. The sign applied for refers to the lost world of the Middle Ages, about which so little is known that we can fantasise about it all the better. 11 The contested decision mixes the reference to a phenomenon with the phenomenon itself. It is eminently suitable for banning crime thrillers with the word ‘murder’ in the title, since, as is generally known, murder is a crime pursuant to Section 211 of the German Criminal Code and there is nothing more immoral than to commit one, and it is eminently suitable for committing the songwriter Reinhard Mey to the stake because the song ‘Der Mörder war immer der Gärtner’ [the murderer was always the gardener] vilifies the latter profession in an immoral manner. In short: the contested decision fails to distinguish fact from fiction. 12 A word sign applied for as a Community trade mark is immoral – as far as prostitution is concerned, other case groups such as those promoting terrorism are not under discussion here – if the recipient of the goods, when reading the sign applied for on or in connection with the offer and marketing of these goods, is insulted or disparaged or if individuals or groups of people are discriminated against or held up to ridicule – for instance in an inadmissibly generalising manner pursuant to Article 3 of the German Constitution. The decisive factor is the objective understanding of the sign applied for from the point of view of the recipient. In the scope of the deliberation required by Article 7(1)(f) CTMR, the right to free expression laid down in Article 10 of the European Convention on Human Rights must be duly taken into account (Grand Board of Appeal, 06.07.2006, R 495/2005-G, SCREW YOU, § 15 to 17). It is also possible for a wording which is vulgar according to the dictionary to be meant in a purely humorous way, depending on the context (R 495/2005-G, § 26). It involves the

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values of European law as a legal system which protects fundamental and human rights, not a linguistic rule book for the suppression of swearwords. 13 The definite article ‘DIE’ refers to an unknown, ultimately fictitious person and not to the recipients of the goods. The term ‘WANDER-’ refers to phenomena which no longer correspond to the current mobility situation. The sign applied for does not contain any semantic statement which could be applied to a particular person or group of people. It also does not incite any particular act. The overall term addresses no one directly and insults no one (unlike in T 417/10 of 09.03.2012 (§ 23 therein), where the reader of the sign was addressed directly in an insulting manner). 14 The wandering lady may therefore wander on, and her wanderings may be mapped using ‘scientific and surveying instruments’, regularly updated in ‘looseleaf collections’, edited using ‘optical character recognition’, expatiated upon in ‘chat rooms’ and declared as a ‘sporting activity’, although the Board naturally assumes that the claimed ‘education’ services intended are those relating to charitable social work and not those relating to education in prostitution.

DECISION OF 28 MAY 2015 – R 2889/2014-4 – DIE WANDERHURE

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Order On those grounds, THE BOARD hereby: 1. Annuls the contested decision. 2. Allows the Community trade mark application to wander on.

Signed

Signed

Signed

D. Schennen

L. Marijnissen

E. Fink

Registrar: Signed H. Dijkema

DECISION OF 28 MAY 2015 – R 2889/2014-4 – DIE WANDERHURE