Acquired distinctiveness of Panton chair must be proven, says Supreme Court

The Swiss Federal Supreme Court has reversed a decision of the Federal Administrative Court in which the latter had held that the shape of the Panton chair could be registered as a trademark (Case 134 III 547).

The Panton chair is a design classic created by Danish designer Verner Panton in 1967. The shape of the chair is undoubtedly a work of art under copyright law (and the Supreme Court seemed to share this opinion).
Panton's heirs applied for the registration of the shape of the Panton chair as a trademark for goods in Class 20 of the Nice Classification. The Swiss Federal Institute of Intellectual Property (IGE) refused the application (Case AM-AA 09/03). On appeal, the Federal Administrative Court reversed the decision of the IGE, holding that the three-dimensional shape of the chair could be registered as a trademark (Case B-6050/2007) (for further details please see "Shape of Panton chair is distinctive, says court"). 
On appeal, the Federal Supreme Court reversed and referred the case back to the Federal Administrative Court. 

The Supreme Court agreed with the IGE that not all shapes that are protectable under design law may also be registered as trademarks. Design law protects aesthetically attractive shapes, while trademarks aim to distinguish the goods of one company from those of others (see Article 1(1) of the Trademarks Act). Shapes that are registrable under design law may not be able to distinguish the origin of goods.

Swiss doctrine and jurisprudence state that to be registrable as a trademark, the shape of a product must differ from the shapes that are customary for the relevant goods in a striking way. This requirement is difficult to meet since the primary function of the shape of a product is not to distinguish its origin. Therefore, the average consumer tends not to perceive the shape of a product as an indication of origin. 
There is a wide variety of shapes for chairs on the Swiss market. Even if the shape of the Panton chair is unusually attractive, it is not entirely different from other attractive shapes or designs on the market and, therefore, is not striking to the average consumer. Therefore, the court held that the IGE, applying Article 2(a) of the act, was right to refuse to register the shape of the Panton chair as a trademark based on original distinctiveness. The application could succeed only if the applicants demonstrated that the shape had acquired distinctiveness through use.
The court did not address the argument that the shape of the Panton chair might fall under the exception set forth in Article 2(b) of the act (nature of the goods). The IGE and the Federal Administrative Court have so far tried to avoid applying this provision. 
Peter Heinrich, Staiger Schwald & Partner Ltd, Zurich

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