Administrative Court again reverses IPO in geographic mark case

Switzerland

The Federal Administrative Court has reversed a decision of the Swiss Intellectual Property Office refusing to extend protection of the international trademark KALMAR to Switzerland (Case B-550/2012, June 13 2013).

Swedish company Cargotec AB sought to extend protection to Switzerland of its international trademark KALMAR, which covered, among other things, metal parts, machines, vehicles and transportation services. The Intellectual Property Office refused the application, noting that Kalmar was a town of 63,000 inhabitants in Sweden and, therefore, the sign was deceptive when applied to goods not originating from Sweden.

The Federal Administrative Court reversed on appeal. The court held that KALMAR would be primarily understood by the relevant (general) public as a reference to squid - not the small town of Kalmar, which has no touristic appeal, no international airport and is virtually unknown in Switzerland.

This case is one in a series of decisions in which the Administrative Court has overturned the Intellectual Property Office on factual grounds after the latter found that the sign at issue indicated a geographic origin. Other recent cases involved the marks SAVANNAH (in this case, the Administrative Court found that the mark would be understood as a reference to vegetation, not the town of Savannah, Georgia) and WILSON (here, the Federal Supreme Court found that the mark would be understood as a surname, not a town in North Carolina).

Although, the Supreme Court had held in the WILSON case that it was presumed that signs with a geographic meaning would be understood as geographic indications, in the present case the Administrative Court found (sensibly) that this presumption can be overcome if the sign has a dominant non-geographic meaning, as was the case for KALMAR.

Mark Schweizer, Meyerlustenberger Lachenal, Zurich
 

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