ALASKA is not descriptive for mineral water, says CFI

European Union
In Mineralbrunnen Rhön-Sprudel Egon Schindel GmbH v Office for Harmonization in the Internal Market (OHIM) (Case T-225/08, July 8 2009), the Court of First Instance (CFI) has upheld a decision of the Fourth Board of Appeal of OHIM in which the latter had rejected a request for a declaration of invalidity under Articles 7(1)(b), (c) and (g) of the Community Trademark Regulation (40/94) (now the Community Trademark Regulation (207/2009)).
On October 31 2001 Mineralbrunnen Rhön-Sprudel Egon Schindel KG filed a request for a declaration of invalidity of a figurative Community trademark consisting of the term 'Alaska' and the image of a polar bear on an ice floe. The mark had been registered on November 3 1998 for various non-alcoholic beverages in Class 32 of the Nice Classification (including mineral water and fruit juices). Rhön-Sprudel argued that the mark:
  • was devoid of any distinctive character;
  • consisted exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or time of production of the goods or of rendering of the services, or other characteristics of the goods and/or services;
  • was of such type as to deceive the public as to the nature, quality or geographical origin of the goods and/or services. 
The Cancellation Division of OHIM rejected the request on the grounds that the mark:
  • was distinctive;
  • was not descriptive; and
  • would not deceive consumers as to the origin of the goods.
Rhön-Sprudel's appeal was dismissed by the Fourth Board of Appeal of OHIM. The board held that the average consumers in the European Union would associate the term ‘Alaska’ with snow, mountains, forests, tundra, and oil, gas and wood production. The board admitted that the polar bear and the ice floe depicted in the mark strongly referred to the word element ‘Alaska’, as Alaska is the most northern US state and includes the polar region. Further, the board stated that the figurative elements of the mark suggested the idea of untouched nature, coldness and freshness. However, because the average consumer would not associate Alaska with the production of mineral water, the mark was not descriptive.
Rhön-Sprudel appealed to the CFI, which agreed with the reasoning of the board. The CFI added that the average consumer would not associate Alaska with fruit juices and related goods because such products are generally made of fruits which do not grow in Alaska.  
With regard to the issue of whether the term 'Alaska' was descriptive, the CFI considered whether, at the time of registration of the mark, it was reasonable to expect that the relevant public would perceive the term 'Alaska' as designating the geographical origin of the goods. The CFI also considered whether the relevant public was likely to establish such a link in the future. The CFI concluded that even though the names of certain mineral waters refer to their place of origin and some websites mention the production of mineral water in Alaska, the relevant public, at the time of registration of the mark, would not have believed that the goods at issue were imported from Alaska into the European Union.
The CFI also confirmed established case law and held that it was not admissible to introduce new facts and evidence at this stage of the proceedings. The CFI reiterated that it can review only the legality of the decisions of the Board of Appeal, as provided in Article 63 of the regulation. Finally, the CFI confirmed that the legality of such decisions will be assessed based exclusively on the regulation - national court decisions are irrelevant.
The decision is in line with the case law of the European Court of Justice. It is also consistent with the practice of OHIM with regard to trademarks for mineral water (eg, the FIJI mark). Because the mark in the case at hand did not include a national emblem, the CFI was correct in finding that it could function as a trademark without indicating the geographical origin of the goods. One may argue that consumers in the European Union are used to purchasing mineral water originating from all over the world. However, this was not the case in 1998 when the mark was registered.
Philipe Kutschke, Bardehle Pagenberg Dost Altenburg Geissler, Munich

Unlock unlimited access to all WTR content