CHOCO STARS is descriptive, but LEMON STAR isn't

The Federal Administrative Court has dismissed an appeal against the refusal to register the mark CHOCO STARS for goods in Class 30 of the Nice Classification (decision of July 12 2007, published on October 1 2007). The court pointed out that the appellant could not rely on decisions involving similar trademarks, as previous case law no longer reflected current practice.

German sweets producer August Storck KG successfully applied for the registration of the trademark CHOCO STARS for confectionery, chocolate, chocolate products and pastries in Germany and other countries. However, the Federal Institute of Intellectual Property (IGE) refused to register the mark in Switzerland on the grounds that the trademark consisted of descriptive elements.

On appeal, the Federal Administrative Court upheld the IGE's decision. August Storck claimed that its application should be allowed under the principle of equality of treatment, since the following trademarks, among others, had been registered in Switzerland:

• STAR (registered for goods in Class 30 in 1974);
  
  
• GOLD STAR (registered for goods in Classes 29 and 31 in 1982);
  
  
• YOGU-STAR (registered for goods in Classes 29 and 30 in 1988);
  
  
• LEMON STAR (registered for goods in Classes 30, 32 and 33 in 1999); and
  
  
• ECOSTAR (registered for goods in Class 4 and services in Classes 37 and 40 in 2006).

The court stated that the IGE's former practice - which applied for the registration of the trademarks STAR, YOGU-STAR and GOLD STAR - was no longer followed. Moreover, the authorities are not bound by former decisions. Therefore, August Storck could not rely on these registrations. The court thus dismissed the appeal and affirmed the decision of the IGE.

The decision demonstrates that the criteria for the registration of trademarks have become stricter. However, it remains unclear why the court reviewed the three older trademarks, but failed to mention the two relatively new trademarks LEMON STAR and ECOSTAR, which do not appear to be less descriptive than the trademark at issue.

The decision is final, as August Storck did not appeal.

Marco Bundi and Benedikt Schmidt, Meisser & Partners, Klosters