CHAMP confusingly similar to champagne in Switzerland - but not in France

The Swiss Federal Supreme Court has rejected an application to register CHAMP in relation to drinks but excluding wines, finding that the sign was deceptive.

Karlsberg Brauerei GmbH & Co KG (Karlsberg) filed an international application designating Switzerland on the basis of its German registration for CHAMP for goods in Classes 32, 33 and 42 of the Nice Classification. The Swiss Federal Institute of Intellectual Property (IGE) rejected the application for Classes 32 and 33, but allowed it in respect of Class 42. The IGE considered 'champ' to be a synonym for or abbreviation of the word 'champagne' or the name Champagne - the French region in which champagne is produced. It held that this was a direct descriptive indication of the geographical origin of goods and services. Furthermore, the IGE held that:

• the sign must remain free for all to use;
  
  
• it was deceptive as the goods claimed by Karlsberg did not originate from France; and
  
  
• the sign was also contrary to an agreement between Switzerland and France concerning the protection of geographical indications (GIs), appellations of origin and other geographical designations.

Karlsberg brought the case before the Swiss Board of Appeals for Intellectual Property, where it restricted the list of goods for which it sought registration to exclude wine and sparkling wine. The board allowed the appeal, finding that 'champ' is not an abbreviation for 'champagne' or Champagne, but instead means 'field' in French. Furthermore, the board found that the agreement between France and Switzerland applied only to wines, and as these were excluded from the application, CHAMP could not be found to be deceptive in that regard.

The Federal Supreme Court overturned this decision, ruling that:

• pursuant to Section 2(1) of the agreement between France and Switzerland, the name Champagne belongs to a historical French province and benefits from an absolute protection for all kinds of goods and not only for wines;
  
  
• the agreement does not prohibit only the use of the exact names protected under the agreement only, but also (i) their translation and use as an adjective, and (ii) the use of designations that are confusingly similar to those named in the agreement; according to the court, even if 'champ' can be perceived as meaning 'field', it is nonetheless perceived by French consumers as a common abbreviation of the word 'champagne';
  
  
• even though the trademark had been accepted in France, it was still considered contrary to the bilateral agreement by the Swiss trademark registrar; and as 'champ' cannot be considered a coined word, but is instead an abbreviation of 'champagne', the sign is also deceptive - doubly so, because not only do the goods to which the sign applies not come from the Champagne region, they also do not apply to wines.

This decision shows the conflicting approaches to GIs of the Swiss Federal Board of Appeal for Intellectual Property and the Swiss Federal Supreme Court (see also COLORADO goods must come from the United States). The court, like the IGE, has a rather restrictive approach; thus, it does not accept registration in Switzerland of a sign that it considers infringes an agreement with France, even thought the sign was accepted in France.

The Board of Appeal was replaced on January 1 2007 by the Federal Administration Court.

Marco Bundi, Meisser & Partners, Klosters