Combination of 'my' and descriptive elements held to lack distinctiveness


The Swiss Federal Administrative Court has, on appeal, confirmed the refusal to register the trademark MYPHOTOBOOK for bookbinding services in Class 40 of the Nice Classification (Case B-4762/2011, November 28 2012).

The Swiss Federal Institute of Intellectual Property (IGE), applying Article 2(a) of the Trademark Act (public domain), had considered that the mark was not (inherently) distinctive for the services in question.

The applicant had argued that, although the elements 'photo' and 'book', including the usual juxtaposition 'photo book', were descriptive of the services at issue, the element 'photobook', together with the possessive pronoun 'my', constituted an unusual combination of three items that did not originally belong together and could not be found in English dictionaries. Therefore, in the view of the applicant, the combination 'my-photo-book' had no distinct meaning. Further, the applicant referred to the fact that the same trademark (although in minuscule letters) had been admitted for registration in certain English-speaking countries, such as the United Kingdom and Ireland, with respect to bookbinding products in Class 16.

The Federal Administrative Court, however, followed the decision of the IGE (in this case the applicant could obviously not rely on any acquisition of distinctiveness through use).

With regard to distinctiveness, the Administrative Court held that the average Swiss consumer of bookbinding services - with a reasonable knowledge of the English language - could easily, without applying any particular amount of imagination or intellectual effort, recognise MYPHOTOBOOK as indicating a book for collecting photos. The mere fact that the term 'photobook' was not listed in English dictionaries was not considered decisive (see also Federal Administrative Court, B-3650/2009, April 12 2010). Therefore, according to the court, the trademark MYPHOTOBOOK would be understood as an immediate reference to such a product. As regards the possessive pronoun 'my', it could be understood as indicating the destination of the service of creating a personalised photo book adapted to the needs of the user. As a result, MYPHOTOBOOK was not suitable to serve as an indication of origin of all goods bearing the mark.

The applicant argued that the IGE had already admitted MYPHOTOBOOK (CH 552’147) in Class 16 and that rejection of the present application would amount to an unjustified denial of equal treatment. According to the practice of the Swiss courts, the same authority must not decide in different ways in relation to two legally identical cases. Nevertheless, the same authority may change it views from time to time if such change is supported by sufficient grounds, especially if an earlier decision had later proved to be wrong. In the present case, however, the Administrative Court found that there were substantial differences between “bookbinding materials” and "bookbinding services" insofar as the materials, as such, are not normally adapted to the needs of the user. This justified different treatment.

With regard to the applicant's argument that trademark offices in other countries had admitted the mark for registration, the court noted that this can be relevant only in borderline cases. In the view of the Administrative Court, the present case was not a borderline case.    

Peter Heinrich, Streichenberg Attorneys-at-Law, Zurich

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