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“Gasteiner” as a reference to the “Gasteinertal mountain region” is not protectable as a trade mark for beverages
22 November 2023
My latest comment on the decision of the Austrian Supreme Court of 22.11.2022 – 4 Ob 171/22, – “Gasteiner Energy Water” which will be published in GRUR-Prax – issue 22- on November 24, 2023, deals with the question of whether the sign “Gasteiner” can be registered as a trade mark for beverages.
The Austrian Patent and Trademark Office refused to register the word mark “GASTEINER ENERGY WATER” and the two image and word marks, for various beverages in classes 30 and 32 on the grounds that they were purely descriptive. The image element is a common representation of mountains, which reinforces the interpretation of the wording as a descriptive geographical indication of origin. The court dealing with the applicant’s complaint also followed this view and argued that the term “Gasteiner” indicates the origin of the product is from the Gasteinertal mountain region and therefore is not a distinctive sign. It is also not sufficient that the trade mark owner currently has a monopoly for the marketing of mineral water from the thermal springs of the Gastein Valley, as monopoly positions are not permanent.
When registering a trade mark, it must always be ensured that among other things, the trade mark does not claim any indications of place or names of, for example, vineyards or mineral water springs.
Irrespective of the fact that well-known places in particular serve as a geographical indication of origin and thus prevent a trade mark to be registered, the name of the place must be reasonably associated with the goods or services claimed. Only if it seems completely unlikely that the goods can ever be produced at this place, a trade mark registration may be considered under certain circumstances.
Henriette März
Trade Mark group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP November 2023
