COLORADO goods must come from the United States

The Swiss Federal Court has overturned a ruling of the Swiss Federal Board of Appeal for Intellectual Property and has reinstated the Federal Institute of Intellectual Property's (IGE) earlier decision to refuse an application to register the mark COLORADO.

In 2004 US enterprise Foot Locker Retail Inc applied for the registration of a device mark with the dominant element COLORADO in relation to goods in Classes 18 and 25 of the Nice Classification. The IGE considered the trademark as a geographical indication and requested a limitation to goods of US origin. This was consistent with its previous practice and, in fact, all previous registrations with the element 'COLORADO' in its internet database are restricted accordingly.

In contrast to its previous practice (eg, its decision in Case MA-AA 01/03 of February 17 2004 on a trademark which included the element 'NY'), the Federal Board of Appeal reversed the COLORADO decision on May 5 2006 and accepted the entry without any restrictions (Case MA-AA 06/05).

The landmark case from the Swiss Federal Court in this area is the August 2 1994 decision relating to an application for the international trademark ALASKA for beverages, which were produced in France. The court held that if a relation between the geographical name and the claimed goods is not apparent or is just of a symbolic character, then the mark shall be accepted as an imaginative sign. However, it also held that while this applied for products such as perfumes, soaps, refrigerators or milk products, the consumer would associate ALASKA beverages with their place of origin, as was the case with other beverages such as Vichy, Valser or Cognac. Therefore, it denied registration but accepted that this was a borderline case.

In the COLORADO Case, the Board of Appeal stated that it will, in the future, allow marks which contain a geographical element without a restriction of the list of goods and services, unless there is a "qualified necessity of protection". It stated that protection is necessary only in the following circumstances:

• The mark with geographical content concerns goods grown in the soil;
  
  
• The mark with geographical content concerns goods or services in relation to which the relevant location enjoys a special reputation with the Swiss public;
  
  
• The geographical indication in the mark is listed in a bilateral or multilateral agreement on the protection of indications of origin, appellations of origin or any other geographical indication; or
  
  
• The mark contains a description of a state in a form of a noun or adjective or its coat of arms, flag or any other national emblem according to article 6ter of the Paris Convention for the Protection of Industrial Property.

The IGE appealed against the Board of Appeal's ruling to the Federal Court. Although the reasoning from the Federal Court has not as yet been issued, the court decided on September 8 2006 in favour of the IGE.

The restrictive approach to geographical marks is consistent with earlier jurisprudence of the Federal Court (see for example the decision FISCHMANUFAKTUR DEUTSCHE SEE, Case 4A.3/2006, decided by the Federal Court on May 18 2006) and therefore the reversal of the board's ruling was not surprising.

J David Meisser and Marco Bundi, Meisser & Partners, Klosters