Court considers scope of protection of mark consisting of family name

Switzerland

The Swiss Federal Administrative Court has upheld a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had admitted an opposition by the owner of the registered trademark PALLAS against the registration of the mark PALLAS SEMINARE (and device) for similar services (Case B-3012/2012, February 5 2014).

Pallas is the name of a goddess in Greek mythology (Pallas Athene), but is also a family name. In the present case, it was the family name of the applicant for the opposed trademark, PALLAS SEMINARE (ie, 'Pallas seminars'). The mark was originally applied for in the form of PALLAS, but the IGE insisted on the addition of 'Seminare' and a figurative element. The mark PALLAS SEMINARE covered data carriers in Class 9, books, instructional and teaching materials in Class 16, and workshops and other educational services in Class 41 of the Nice Classification. The opponent's trademark PALLAS had been registered four years earlier for (among other things) a number of services, especially medical services and services relating to clinics. 

The IGE admitted the opposition insofar as services in Class 41 were concerned. On appeal by the owner of PALLAS SEMINARE, the Federal Administrative Court confirmed the IGE's decision.

For the administrative court, it was relevant that the younger mark covered a class of services (educational services in Class 41) which was not covered by the earlier trademark. Generally, the differences between classes seems to be weaker for services than for goods. In the present case, the owner of the opposed mark was of the opinion that the services he offered had nothing do with medical services. The court, however, held that services “in the field of education” (Class 41) may, in principle, include the “online offering of information on the use of beauty products, cosmetics and perfumery”. 

As regards the similarity of the two signs, it is difficult to define strict rules as to which element of a complex sign is to be regarded as more distinctive than the others. The additional word 'Seminare' was obviously descriptive of the services in question, and thus was hardly distinctive. The same was true of the figurative element, a stylised octagon. Referring to its earlier decision in HÖFER FAMILY OFFICE, the court took the view that the two marks were confusingly similar since neither the descriptive element 'Seminare' nor the figurative element rendered the mark applied for distinctive. Therefore, the fact that Pallas was the family name of the owner of the opposed mark was not decisive.  

Peter Heinrich, Streichenberg Attorneys at Law, Zurich

Get unlimited access to all WTR content