AFRI-COLA registered for certain goods


In a case involving the trademark AFRI-COLA, the Swiss Administrative Court has presented a detailed overview of the principles of registration of geographical indications and generic trademarks (Case B-7412/2006, October 1 2008). The decision also dealt with important aspects of procedure.

Mineralbrunnen Überkingen-Teinach AG owned a registration for the word mark AFRI-COLA (International Registration 820 386) for a number of goods in Classes 29 (spread mixtures) and 30 (including coffee, tea, cocoa, sugar, spices, tapioca, coffee substitutes, bread, flour, salt, rye, mustard, vinegar, ices and ice cream, chocolate, candy, durable sweets, and a large number of natural and processed foodstuffs) of the Nice Classification.  
The Swiss Federal Institute of Intellectual Property refused to extend protection of the mark to Switzerland on the grounds that AFRI-COLA was:
  • a geographical denomination;
  • partially descriptive of the goods in question; and
  • deceptive insofar as the goods were not of African origin.

On appeal, the Federal Administrative Court partially reversed the refusal to extend protection to Switzerland with regard to certain Class 30 goods (ices and ice cream, tapioca, bread, flour, honey, mustard, vinegar, chocolate, durable sweets, waffles and candy). 

With regard to the element 'afri', the court pointed out that African countries are not trading partners of Switzerland for the aforementioned Class 30 goods. Swiss consumers would not expect to find such goods of African origin on the Swiss market. Therefore, the AFRI-COLA mark did not function as a geographical denomination with respect to such goods and could be registered as a trademark.

On the other hand, AFRI-COLA could not be registered for coffee, tea, cocoa, sugar, spices, salt, rice, flour and preparations made from cereals (eg, maize and couscous), since these goods are imported in considerable quantities from African countries. Therefore, AFRI-COLA was descriptive of the geographical origin of such goods. In addition, the trademark AFRI-COLA would be misleading with respect to these goods since the mark was not restricted to goods originating from Africa (eg, see "COLORADO goods must come from the United States"). 

With regard to the element 'cola', the court held that the trademark would be deceptive for goods that do not contain caffeine (eg, coffee substitutes), as cola nuts contain caffeine.

The court held that trademark applications containing a geographical indication require more factual information than others. However, the use of online search results, encyclopaedias, scientific literature and data banks was deemed to be sufficient. Based on such information, the court was able to determine which goods were produced in or exported from Africa. The court also used this information to determine whether the prefix 'afri' had acquired a secondary meaning that differed from the notion of geographical origin. However, no such secondary meaning was found.

Peter Heinrich, Staiger Schwald & Partner AG, Zurich

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