AMERICAN BEAUTY descriptive, not a geographical indication

The Federal Administrative Court has dismissed an appeal against the refusal to register the mark AMERICAN BEAUTY for goods in Class 3 of the Nice Classification. However, despite agreeing with the final decision, the court rejected reasoning that the mark would have been registrable if the applicant had limited its application to goods of US origin.

On September 22 2004 US company BeautyBank Inc applied to register the mark AMERICAN BEAUTY for goods and services in Classes 3, 35 and 44. The Federal Institute of Intellectual Property (IGE) allowed registration of the mark for the services in Classes 35 and 44, but required BeautyBank to limit the goods in Class 3 to products of US origin as the mark contained a geographical indication (ie, the word 'American'). BeautyBank refused to do so and the IGE subsequently refused registration for all the goods in Class 3.

BeautyBank appealed the decision, claiming that the mark should not be viewed as a geographical indication. It argued that AMERICAN BEAUTY was an invented sign that would evoke a certain image of a particular type of woman in the minds of the Swiss public. According to BeautyBank, the mark symbolized an ideal type of beauty and evoked a specific kind of lifestyle.

The Federal Administrative Court agreed with BeautyBank that AMERICAN BEAUTY would not be perceived as a geographical indication. Rather, the relevant public would understand AMERICAN BEAUTY as an indication of the essential attributes of the relevant products. However, the court held that since the products in Class 3 covered by the AMERICAN BEAUTY mark (eg, soaps, essential oils and cosmetics) were designed to help the purchasers of such products to come closer to attaining their ideal of beauty, they would perceive the mark as purely descriptive. Thus, the mark belonged to the public domain and the court therefore refused to allow registration for any goods in Class 3.

The case highlights once again the difference of opinion within the trademark instances as to what constitutes a mark containing a geographical indication.

It is unclear at this time whether BeautyBank will appeal to the Swiss Federal Supreme Court.

Marco Bundi, Meisser & Partners, Klosters