AALBORG not distinctive in Denmark

In Danish Board of Appeal of Patents and Trademarks v Aalborg Industries A/S (Case 579/2004, October 4 2006), the Supreme Court of Denmark has overturned a lower court's decision and has refused an application to register the mark AALBORG for, among other things, marine and industrial boilers.

Aalborg Industries A/S is made up of an international group of companies. The group has since 1919 designed and produced marine and industrial boilers. The group was renamed Aalborg Industries in 1998. It has its headquarters in Denmark's fourth largest city, Aalborg.

Aalborg Industries registered in 1976 AALBORG BOILERS as a trademark in Denmark. The registration has been renewed and is still valid. Following the name change in 1998 Aalborg Industries registered the Community trademarks AALBORG INDUSTRIES and AALBORG HEATERS for boilers and related goods. It later registered AALBORG as a Community trademark for boilers and filed an application to register that mark in Denmark.

The Danish Patent and Trademark Office refused registration and the decision was upheld by the Board of Appeal of Patents and Trademarks. Aalborg Industries appealed to the Commercial Court.

In the Commercial Court, Aalborg Industries put in evidence a series of letters from foreign customers, showing that they refer to Aalborg Industries as simply Aalborg. It also filed evidence from the Danish Boilers Association, confirming that Aalborg Industries is well know in the trade as Aalborg, and that this name was considered to be well-established in Denmark for the production and marketing of boilers. It further argued that, in the trade, the name Aalborg neither indicates geographic origin, nor a clear connection between boilers and the city of Aalborg. It noted that this was also the conclusion drawn by the Office for Harmonization in the Internal Market when it allowed registration of AALBORG as a Community trademark.

The Board of Appeal objected to the Commercial Court's ruling and appealed to the Supreme Court. It argued that the trademark AALBORG lacks distinctiveness according to Section 13 of the Danish Trademarks Act because Aalborg is the name of the fourth biggest city in Denmark, therefore there was a likelihood that Danish business society would be under the impression that Aalborg Industries' products came from the city or its surrounding areas. The need for keeping the word as non-registable was emphasized by the fact that there exist in the area more than 160 enterprises in which the name Aalborg is included.

The Supreme Court upheld the Board of Appeal's arguments and overturned the Commercial Court's decision. It stated that according to the Trademarks Act a trademark must have necessary distinctiveness and cannot be registered if it consists of signs or terms which in the trade can serve as indicating a geographical origin.

As Aalborg is the fourth largest city in Denmark and the biggest industrial city in North Jutland, it must be expected within the Danish business world that the mark AALBORG will be considered as an indication of the origin of the goods in question. Thus, the mark lacked distinctiveness and could not be registered.

Christian Levin Nielsen, Zacco Denmark AS, Denmark