Austria: Energy Water from the Gasteinertal - different views of the ÖPA and the EUIPO

 

On July 13, 2021, the word mark "GASTEINER ENERGY WATER" was registered for protection in the EU at the EUIPO for various goods in classes 30 and 32 (including coffee drinks, tea-based drinks, mineral water, carbonated water, non-alcoholic drinks or lemonades), which was granted on October 30, 2021.

However, the Austrian Patent Office (ÖPA) decided differently: 5 months earlier, on February 3rd, 2021, a sign of the same name for the identical goods was registered with the ÖPA both as a word mark and for two word and figurative marks "GASTEINER" (with black and white rspkt with blue mountains). However, the entries were denied because the marks are purely descriptive and not originally distinctive, as the Supreme Court confirmed on November 22, 2022 ( 4 Ob 171/22h), since, in the opinion of the Patent Office and the Court of Appeal, the term "Gasteiner" is understood by the relevant public as an indication of the origin of the products, namely from the mountainous region of Gasteinertal. With regard to the representation of the mountains in the two figurative marks, this type of representation is common and reinforces the interpretation of the word component as a descriptive geographical indication of origin (the extraordinary revision was not allowed due to the lack of a significant legal issue).

However, the applicant's arguments did not convince the OGH. It was argued that the applicant was granted the monopoly for the marketing of mineral water from the thermal springs of the Gastein Valley on the basis of an ordinance and that there were therefore no competitors and no need to keep it free. The Supreme Court replied that the trademark was not only registered for mineral water but also for other drinks such as iced tea, fruit juices, coffee and syrups. In addition, there is also a need to keep it free because other sources could be discovered or the monopoly regulation could be changed. The objection that the Gasteinertal is not known for the goods registered and therefore the designations would not be interpreted as a geographical indication, did not convince the OGH because of its long history as a health resort and the local thermal springs. The OGH also did not follow other arguments and denied the original distinctiveness, so that the applicant could only overcome the registration obstacle of § 4 Para. 1 Z 3 MSchG by means of proof of validity (§ 4 Para. 2 MSchG).

However, this decision shows the permissible different legal views between a national trademark office (here ÖPA) and the EU Intellectual Property Office (EUIPO). Each authority is free to make its own decisions and not dependent on one another. However, it also shows that the standard of examination can obviously be different. However, the issue of legitimate use of an internationally known trademark such as the one in question should by no means pose a problem.

 

For further information, please contact:

Thomas Schneider, Partner

Zumtobel + Kronberger, Salzburg

Email:  schneider@eulaw.at

t:  +43 662 624500

 

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