EN Official Journal of the European Union C 267/48

Appeal brought on 14 September 2009 by Mineralbrunnen Rhön-Sprudel Egon Schindel GmbH against the judgment of the Court of First Instance (Eighth Chamber) delivered on 8 July 2009 in Case T-226/08 Mineralbrunnen Rhön-Sprudel Egon Schindel GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs); the other party to the proceedings being: Schwarzbräu GmbH

(Case C-364/09 P)

2009/C 267/81

Language of the case: German

Parties

Appellant: Mineralbrunnen Rhön-Sprudel Egon Schindel GmbH (represented by: P. Wadenbach, Rechtsanwalt)

Other parties to the proceedings:

— Office for Harmonisation in the Internal Market (Trade Marks and Designs)

— Schwarzbräu GmbH

Form of order sought

1. Set aside the judgment of the Court of First Instance of the European Communities of 8 July 2009 in Case T-226/08;

2. Annul the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market (Trade Marks and Designs) of 8 April 2008 (Case R 1124/2004-4);

3. Completely delete the Community trade mark No 505503 ‘ALASKA’ owing to the existence of absolute grounds for refusal;

4. Order the Office for Harmonisation in the Internal Market (Trade Marks and Designs) to pay the costs of the proceedings.

In the alternative to the form of order sought in point 3 above, the appellant requests the Court to:

— Annul Community trade mark No 505503 ‘ALASKA’ at least in respect of the following goods: ‘mineral and aerated waters and other non-alcoholic drinks in Class 32’.

Pleas in law and main arguments

The present appeal is brought against the judgment of the Court of First Instance which dismissed the appellant’s action brought against the decision of the Fourth Board of Appeal of the Office for Harmonisation in the Internal Market of 8 April 2008. By that decision the Board of Appeal rejected the appellant’s application for a declaration of invalidity of the Community word mark ‘ALASKA’ in respect of all the goods covered by the registration (mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages).

The dispute between the parties centres on the question whether an absolute ground for refusal in the form of the requirement to maintain the availability of an indication of geographic origin exists.

By its appeal the appellant complains that the Court of First Instance misinterpreted Article 7(1)(c) of Regulation (EC) No 40/94, in particular with regard to the principles developed by the case-law.

According to the wording of the abovementioned provision of Regulation No 40/94, for registration of a Community trade mark to be excluded it suffices if the mark consists exclusively of signs or indications which may serve, in trade, to designate the geographical origin of the goods covered by the application. It follows from that provision that geographic designations which may be used by undertakings, must also be kept available for those undertakings as indications of geographic origin with regard to the group of goods concerned. The application of the abovementioned provision of Regulation No 40/94 does not require that there be a real, current or serious requirement to keep the sign available.

Had the Court of First Instance interpreted Article 7(1)(c) of Regulation No 40/94 and the principles developed by the case-law correctly for the purposes of the present case, it would have had to find that Alaska was the largest source of drinking water in the United States, that the relevant public associated Alaska with a natural surplus of pure water in its most diverse forms, that an economically significant amount of mineral water was produced in Alaska and that it was already distributed in the Community, meaning that further marketing was a serious possibility. It was accordingly clear that the designation ‘ALASKA’ could in future be used by competitors as an indication of geographic origin.

The Court of First Instance instead interpreted Article 7(1)(c) of Regulation No 40/94 and the principles of the case-law incorrectly by imposing, while carrying out a test of viability, that is to say whether the distribution of mineral water from Alaska in the Community was economically feasible or not (having regard to competition on the market, transport costs), additional requirements which went beyond those principles. Those broader requirements were excessive in the light of the objectives of Article 7(1)(c), its wording and in particular in the light of the principles developed in the case-law, and led to an excessively broad interpretation which was not in conformity with the purpose of the Community law provision.