BAHNCARD registration on the wrong track

The Federal Commission of Appeal for Intellectual Property Rights (commission) has dismissed an appeal against the partial refusal of German rail company Deutsche Bahn AG's application to register BAHNCARD (Case MA-AA 02/03). It held that the mark was not distinctive in relation to services in Classes 36 and 39 of the Nice Classification.

Deutsche Bahn owns the international trademark registration BAHNCARD (the German word 'bahn' can be translated to mean 'railway') for services in Classes 36, 39 and 42. It applied to claim protection of the mark in Switzerland. The Swiss Trademarks Office accepted the mark only in connection with services in Class 42, namely "accommodation and boarding of guests in hotels and restaurants, and organization and arrangement of temporary accommodation for tourists". In relation to the services claimed in Classes 36 and 39, the trademark registration was rejected on the grounds that it was descriptive. Deutsche Bahn appealed to the commission.

The commission dismissed the appeal and refused registration in Classes 36 and 39. It confirmed that under Swiss trademark law, words or designs cannot be registered if they are generic and have not acquired secondary meaning as a trademark for the goods and/or services concerned. Signs are generic if they are indispensable in commerce or if consumers understand them to be descriptive. It noted, among other things, that evidence of corresponding registrations in other countries is only of relevance in borderline cases.

The commission agreed that the BAHNCARD mark is an invented term because it consists of a German and an English word ('bahn' and 'card' respectively). However, as Swiss consumers typically know the meaning of 'card', the commission equated BAHNCARD with the German word 'Bahnkarte' and examined whether that term had the required distinctiveness for various financial services in Class 36, and a variety of transportation and goods or luggage storage services in Class 39.

The commission held that in relation to financial services, BAHNCARD could be described as a customer card issued by a rail company. Turning to the services in Class 39, it observed that the German word 'karte' is in some contexts equivalent to the English word 'card', but that in relation to transportation, the more appropriate English translation is 'ticket'. The commission stated that even consumers who were not aware of this linguistic distinction would still understand BAHNCARD to mean 'ticket'. In addition, use of the mark by a rail company for luggage and goods storage services was an obvious use. The mark was therefore descriptive for the services claimed under Classes 36 and 39.

Deutsche Bahn's petition for appeal filed with the Swiss Federal Court has also been rejected

J David Meisser and Bettina Bochsler, Meisser & Partners, Klosters