BRORA cannot be registered for whisky not originating from Brora
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The Swiss Administrative Court has affirmed a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the trademark BRORA for alcoholic beverages on the grounds that such registration would be contrary to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), even though BRORA had been successfully registered as a Community trademark (Case B-6442/2007, May 30 2008).
Diageo Scotland Limited - a large beer, wine and spirits holding company situated in Edinburgh, Scotland - sought to register the word mark BRORA in Switzerland for "alcoholic beverages (except beers); whisky and whisky-based beverages" in Class 33 of the Nice Classification. The IGE refused to register the mark on the grounds that the trademark would be misleading for goods not originating from Scotland. The IGE pointed out that Brora is a village situated in the county of Sutherland (Scotland) and that the mark BRORA would be understood as referring to this region by the relevant consumers. In response, Diageo limited the goods "whisky and whisky-based beverages" to goods originating from Scotland. However, the IGE again refused registration on the grounds that it would be contrary to Article 23(2) of the TRIPs Agreement, which grants additional protection to geographical indications for wines and spirits in certain circumstances. Diageo appealed.
The Administrative Court first considered whether, under Article 23 of the TRIPs Agreement, a geographical indication must be understood as such by the relevant public. The court noted that, in contrast to Article 47 of the Swiss Trademarks Act, Article 23 did not require that a geographical indication be understood as such by consumers; rather, Article 23 required that the location in question identify spirits or wines in view of the region's characteristics and climate, among other things. After scrutinizing the relevant provisions of the TRIPs Agreement, the court came to the conclusion that Brora was well known for its whisky and that the Scottish region where the village was situated enjoyed a special reputation with regard to whisky. Therefore, the application was contrary to Article 23(2) of the TRIPs Agreement. The court further held that Article 24(9) of the TRIPs Agreement (under which there is no obligation to protect geographical indications which are not or cease to be protected in their country of origin) did not apply in this case since the designation 'Brora' was still used for whisky stocks originating from that region.
The decision highlights the strict approach followed by the Swiss authorities with regard to the registration of geographical indications. However, the court pointed out that there was an important exception to this approach - that is, when it is questionable whether a certain geographical indication should be kept free for use by competitors. Referring to earlier case law, the court noted that when the authorities of the country of origin do not deem it necessary to keep a particular geographical indication free for use by competitors, the Swiss authorities need not apply a stricter test (see also BELLAGIO not viewed as geographical indication, states Administrative Court). Nevertheless, it remains to be seen whether the IGE (which is in favour of limiting the effect of foreign decisions) will follow the court's practice and take foreign decisions into account in such cases.
Marco Bundi, Meisser & Partners, Klosters
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