CALVI is not geographically deceptive, says court
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In Calvi SpA v Federal Institute of Intellectual Property (Case B-6287/2007, November 10 2008), the Federal Administrative Court has reversed a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the figurative trademark CALVI.
Calvi SpA (Italy) applied for the registration of the figurative trademark CALVI for goods in Class 6 of the Nice Classification (goods of metal). The IGE rejected the application on the grounds that the mark was geographically deceptive. The IGE stated that because Calvi is the name of a city on the French island of Corsica, the list of goods had to be limited to goods originating from France. Calvi appealed to the Federal Administrative Court.
The court first held that the word 'Calvi' has several meanings because:
- it refers to locations both in Corsica and in Italy; and
- it is a surname of Italian origin that is used in Switzerland.
The court stated that although the town of Calvi in Corsica is a well-known holiday destination, consumers who have never been to Corsica (ie, the majority of them) will perceive the word 'Calvi' as referring to an Italian location or to a surname.
In addition, the court highlighted the fact that Corsica is neither well known nor suited for the production of metal parts. Therefore, the court concluded that the relevant public would not expect goods sold under the mark CALVI to originate from the city of Calvi or from Corsica. In addition, the device element of the mark (which depicts a cog or a toothed wheel) did not refer to the city of Calvi or to the island of Corsica.
The court thus ordered that the IGE register the mark.
In a November 3 2008 decision, the court had held that the mark LANCASTER was deceptive insofar as the goods did not originate from the city of Lancaster in England (for further details please see "LANCASTER held to be geographically deceptive").
Alfred Strahlberg, Strahlberg & Partners, Riga
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