Capital letter may acquire secondary meaning

The Supreme Court has held that a single capital letter may acquire distinctive character and, consequently, need not be kept free for use by competitors (BGE 134 III 314, March 11 2008, published on July 22 2008).
Cooperative society Migros-Genossenschafts-Bund operates a leading chain of supermarkets. The chain, which is well known in Switzerland, offers a wide range of goods and services. Migros is the owner of various Swiss trademark registrations for word and figurative trademarks consisting of or containing the capital letter 'M' (Registrations 439 963, 369 547 and 406 736).
In November 2002 Kraft Foods Schweiz Holding AG applied for the registration of the figurative trademark M-JOY (the letter 'M' being the dominant element of the mark) for chocolate products. In 2004 Migros successfully opposed the application before the Federal Institute of Intellectual Property (IGE). Kraft Foods appealed the decision and the appeal is still pending.
In 2005 Kraft Foods used its M-JOY trademark at the Lauberhornrennen ski race on several large banners. Migros requested that Kraft Foods cease such use, but Kraft Foods refused to do so.
Later that year Kraft Foods filed an action for declaratory judgment that it was not infringing Migros's rights. Migros counterclaimed, requesting that the court:
  • prohibit Kraft Foods from using the M-JOY mark in Switzerland; and
  • declare the M-JOY mark to be null and void.
In 2007 the Zurich Commercial Court held that Kraft Foods did not infringe Migros's rights. It held that the capital letter 'M' was not protectable and had to be kept free for use by competitors. In the court's view, the protection of Migros's M marks applied only to the stylized depiction of the letter 'M'. Migros appealed to the Supreme Court.
The Supreme Court overturned the decision of the lower court and allowed the appeal. The court held that although the capital letter 'M' belonged to the public domain, it did not need to be kept free for use by competitors. According to the court, a single letter may in principle be protected as a trademark if it has acquired secondary meaning. Whether such mark has acquired disctinctive character must be determined for each product and service covered by the mark. In the case at hand, the court held that the M marks had acquired secondary meaning for chocolate products.
Although single letters are usually not distinctive, they may acquire distinctive character with regard to certain goods and services. Therefore, a trademark consisting of a single letter may become distinctive where the trademark owner has invested a lot of effort and money in the mark. The decision of the Supreme Court is consistent with the practice of the IGE. Evidently, the decision does not prohibit other entities from using the letter 'M' in their trademarks, but problems may arise where it is used in a prominent manner.
Marco Bundi, Meisser & Partners, Klosters

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