According to a fundamental principle enshrined in the Swiss constitution, all people are equal before the law. Accordingly, comparable cases should also be decided by the judiciary in a comparable manner. In a recent case, the Swiss Federal Administrative Court decided to enter a trademark in the register despite its lack of distinctive character – based solely on the existing registration of several other (similarly non-distinctive) Trademarks.
Previous history
In 2004, the German confectionery manufacturer Haribo registered the Word Mark “Goldbären” as International Trademark No. 823 911 under the Madrid System for the product “Confiserie” in Class 30. In August 2011, protection was extended to Switzerland. In July 2012, the Swiss Federal Institute of Intellectual Property (IPI) issued a provisional refusal of protection on the grounds that the sign referred to characteristics, namely the quality, color, shape and nature of the goods claimed. The consumer would perceive the sign as a reference to gold-colored products in the shape of a bear. The sign therefore belongs to the public domain and is not protectable as a Trademarks.
The trade mark proprietor then limited the list of goods to “Confiserie, à savoir bonbons gélifiés” (“confectionery, namely jellied sweets”). It argued that the sign was not descriptive because gold was neither the color nor an ingredient of gumdrops, and the goods were not packaged in gold foil, unlike chocolate products. Furthermore, it pointed to a number of already registered Trademarks with protection in Switzerland, which contain the element “gold” and were registered for foodstuffs in class 30.
The IPI upheld its opinion and confirmed the refusal of protection. The trademark owner appealed against this to the Swiss Federal Administrative Court.
Decision of the Federal Administrative Court
In its decision, the Federal Administrative Court first of all clearly states that the sign “Goldbären” is promotional for the claimed products and refers to bear-shaped products of outstanding quality. Consequently, the sign was considered to be part of the public domain.
However, a whole series of comparable Trademarks for comparable products would already enjoy protection in Switzerland (e.g. “GOLDFISCHLI”, “GOLDFISH” for “baked goods and confectionery”; “GOLD STAR” for “food”, “GOLD HERZ’L” for confectionery, “GOLD BUNNY” for chocolate, “Gold Reindeer” for chocolate, etc.). All these Trademarks are formed on the basis of the same concept, consisting of the color indication “Gold” combined with a product or animal name. With regard to chocolate products, there are even further arguments against Protectability because such products are often packaged in gold foil. It is therefore not understandable why the previous Trademarks enjoy protection but the present sign cannot be registered. The previous registrations would also demonstrate a long-standing practice of the IPI (dating back to 1980) that continues to this day. The depositor’s interest in equal treatment would also not be opposed by any overriding public or private interests. Finally, the scope of protection of the sign was limited.
As a result, the Federal Administrative Court came to the conclusion that the Trademarks should be allowed for trademark protection due to the claim of equal treatment.
Comment
The Federal Administrative Court’s assessment of the public domain character of the sign is not surprising, but the registration on the basis of the principle of equal treatment is. The judgment clearly sets out the requirements that must be met for a Trademarks to be registered in Switzerland on the basis of existing prior registrations:
1. long-standing and still ongoing practice in relation to comparable goods (in terms of signs and products).
2. no explicit change in practice between the registration of the prior registrations and the date of examination of the Trademarks.
3. no conflicting overriding public or private interests.
4. no monopolization of individual descriptive terms (no broad scope of protection).
Point 4 seems to refer to the point of the requirement of availability: A sign is not to be registered in this way which is to be kept free for use by third parties.
The question arises as to the value of a Trademarks which is explicitly classified by the Federal Administrative Court as descriptive and thus as part of the public domain and which is only registered on the basis of the principle of equal treatment. It can be assumed that a court will at least classify the scope of protection of the Trademarks as extremely low. As soon as there is a minimal difference between the signs or a certain difference between the goods, a sign is likely to be classified as no longer confusingly similar to the Trademarks in question. At best, a court may even classify the Trademarks as not Protectability or cancel the trademark if a corresponding counterclaim is filed.
It is therefore certainly worthwhile to register an important Trademarks – if at all possible – by other means, if necessary by asserting that the mark has been registered.
The Haribo trademark “Goldbären” has already gained considerable notoriety in another context. Based on this, Haribo defended itself against Lindt’s “Lindt Teddy”, a chocolate product wrapped in gold foil in the shape of a (teddy) bear. In autumn 2015, the German Federal Court of Justice (BGH) ruled that there was no trademark infringement, in principle because a three-dimensional product shape cannot be monopolized with a Word Mark. It is interesting in this respect that the Federal Administrative Court states in its decision that “Goldbären” for chocolate products should be part of the public domain due to the common use of gold-colored packaging.
Finally, it is interesting to note that the Federal Administrative Court stated in its decision that, if the market penetration of the sign in question is only asserted in the second instance, this point must be referred back to the IPI for assessment – unless the sign is registered for other reasons. In practice, this allows for a step-by-step procedure, whereby the sometimes very time-consuming assertion of market penetration only has to take place once the Trademarks have been assessed by both the IPI and the appeal instance as otherwise not protectable.
The decision of the Federal Administrative Court is not legally binding. An appeal can still be lodged with the Swiss Federal Supreme Court, which will make the final decision.
This article has been published in edited form as an International Report by iam – intellectual asset management.