What’s in a name? The Oktoberfest claim

Madam Justice Lorraine Schembri Orland has decided that the name 'Oktoberfest' cannot be owned by any particular organisation.

ITC Limited and a number of other companies instituted legal proceedings against LBM Breweries Limited following a warrant of prohibitory injunction blocking ITC from organising a beer festival called 'Oktoberfest' between 21 and 23 October 2005 at the Naxxar Trade Fair Grounds. LBM Breweries Limited claimed that they had been organising Lowenbrau Oktoberfest since 1999 and therefore the plaintiffs would be causing confusion by using the name. ITC contested this warrant on the grounds that it was issued against JTC Limited and not ITC Limited and, more importantly, that the word 'Oktoberfest' is used internationally, associated with any Bavarian beer festival (not solely that organised by the defendant) and cannot be registered as a trademark.

The defendant pleaded that the warrant of prohibitory injunction was issued according to law and that the two activities did in fact cause confusion.

The Court in a partial judgement decided that the warrant was issued according to law and therefore the plaintiffs were prohibited from using the name 'Oktoberfest'. The action continued, investigating whether the word was in the public domain and not the property of the defendant.

The plaintiffs presented their evidence and testified they had taken part in a number of other activities named Oktoberfest as early as 1993 at a leading hotel in Malta. In 1996 ITC Limited approached LBM Breweries to organise an Oktoberfest, but in 1999 the defendant held one on its own. It was concluded that Oktoberfest is organised around the world, especially in Europe and the United States.

The plaintiffs approached the defendant to organise a 2005 Oktoberfest. Although there was some interest, the defendant took the legal position that the activity could not be called Oktoberfest. In order to prove that 'Oktoberfest' was in the public domain, ITC Limited applied to register it as a trademark. As expected, ITC was turned down.

LBM Breweries Limited produced its evidence and confirmed that it had never given authorisation for ITC Limited to use 'Oktoberfest'. Once they learnt of the proposed activity they took immediate action.

The Court examined the law concerning unfair competition listed in the Commercial Code.  Apart from this case, law dictates that a trader has the right to protect against unfair competition and the use of names which may cause confusion in the marketplace. The Court pointed out that the actions for the protection against unfair competition and for the unlawful use of a trademark or sign are separate and distinct. The fact that the plaintiffs tried to register the word 'Oktoberfest' and were refused has no bearing on whether they committed an act of unfair competition. The trader claiming against unfair competition must prove that he or she was the first to use a name or sign and that its use will cause a risk of deceiving the average person. (The sign need not be a perfect copy to cause confusion.)

The Court examined whether LBM Breweries Limited could take exclusive ownership of the word 'Oktoberfest', as opposed to it being available for public use. In fact, the Trademarks Act does not allow a monopoly on words in common use. Oktoberfest is a festival with an international reputation, with its origins in Bavaria, Germany. Oktoberfests were organised in Malta well before the defendants started to organise their version.

The defendant failed to prove that the use of the name 'Oktoberfest', combined with their brand, was exclusive to them and that any other use of the name would cause confusion. The Court concluded that 'Oktoberfest' was identified with a beer festival originating in Germany and famous internationally. Nor did the defendant prove that in Malta the name 'Oktoberfest' was identified exclusively with the activities it organised.

The Court declared that 'Oktoberfest' was in the public domain and that the plaintiffs were free to make use of it in the future.

Malcolm Mifsud is a lawyer with Mifsud & Mifsud Advocates
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