Administrative Tribunal considers protection of terms falling in public domain


The Swiss Administrative Tribunal has held that there was a likelihood of confusion between the figurative trademark DERMACLINIQUE BEAUTY FARM (depicted below) and the word mark CLINIQUE. It thus overturned the decision of the Swiss Federal Institute of Intellectual Property (IGE) finding that there was no likelihood of confusion, and refused to grant protection to the DERMACLINIQUE mark (Case B-6821/2013).

By doing so, the Administrative Tribunal dismissed the practice whereby the IGE strictly refuses to extend trademark protection to terms that fall in the public domain. In the present case, even though the IGE had applied a more demanding standard to the assessment of the likelihood of confusion due to the identity or similarity of the goods/services, it held that there was no likelihood of confusion between the two trademarks. The IGE had found that the word 'Dermaclinique', despite being similar to the trademark CLINIQUE, was directly descriptive of the relevant goods and services and, therefore, fell in the public domain. Thus, the protection of the trademark CLINIQUE did not extend to the word element 'Clinique' in the sign DERMACLINIQUE.

In 1997 the Swiss Appeals Commission for Intellectual Property (ACIP) had recognised that the trademark CLINIQUE was well known among (female) consumers and that, as a strong trademark, it deserved a wider scope of protection (decision of the ACIP MA-WI 42/96 of October 10 1997, cons 3, Clinique/Unique frisch Kosmetik [fig]).

In light of this decision, the Administrative Tribunal held in the present case that the protection of a trademark is limited only if the term at issue is completely in the public domain and is purely descriptive. Otherwise, weakly distinctive elements would be removed from the assessment, leading to a mosaic-like comparison of the signs without considering their overall impression. According to the Administrative Tribunal, the elements 'clinique' and 'dermaclinique' were not directly and purely descriptive with regard to the relevant goods and services. Therefore, the protection of the trademark CLINIQUE extended to the word element 'Clinique' in the sign DERMACLINIQUE and there was a likelihood of confusion.

Further, although the term making up the CLINIQUE trademark was initially in the public domain, it was registered as it had acquired distinctive character through use. Therefore, the sign CLINIQUE was protected against identical or similar signs covering identical or similar goods or services. Should the courts or the IGE decide differently, then there would be no protection at all for such terms.

Markus Frick and Benno Fischer, Walder Wyss Ltd, Zurich

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