Decision highlights strictness of practice regarding marks similar to geographical names

The Swiss Federal Administrative Court has dismissed an appeal against a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to allow the registration of Janssen Pharmaceutica NV's international trademark FIRENZA in Class 5 of the Nice Classification in Switzerland (Case B-5451/2013, June 4 2014). The IGE had found that the mark could be deceptive, as consumers would expect the products to originate from Italy, due to the similarity of the mark to the name of the Italian city of Florence ('Firenze' in Italian).

Janssen was the owner of the international trademark FIRENZA (No 1079438) for “human pharmaceuticals” in Class 5 in Benelux. Janssen then sought to extend protection of the mark to the territory of Switzerland. However, on June 25 2012 the IGE issued a refusal as the trademark referred to the Italian city of Florence and, therefore, there was a risk that consumers would be misled into thinking that the goods originated from Italy.

Janssen subsequently tried to convince the IGE that FIRENZA would not be understood as a geographical indication but, rather, as a coined sign. Therefore, there was no risk that consumers could be misled. Further, pharmaceuticals may be produced all over the world, so consumers would not think about a specific place of production. Janssen also claimed that other comparable trademarks had been allowed without any restriction.

The IGE did not allow the registration of the mark and, on September 27 2013, Janssen filed an appeal with the Administrative Court. While reiterating the same arguments as before the IGE, Janssen also stated that Florence, as a well-known touristic place for Swiss people, would be known in its Italian spelling 'Firenze', and not as 'Firenza'. The mark was thus a clearly visible and notable change from the geographical indication 'Firenze'.

The Administrative Court disagreed. The court noted that the geographical indication 'Firenze' and the trademark FIRENZA were almost identical, except the last letter. The signs were therefore very close visually and phonetically. Based on the jurisprudence regarding MILANELLO and TOSCANELLA (which were considered as geographical indications referring to Milan and Tuscany), the court stated that, even if a sign is not identical to a geographical indication, it may still evoke a geographical place. There will be no deception as to the origin of the goods only if the geographical indication in question is clearly symbolic for the goods at issue (eg, 'Alaska' for menthol cigarettes or 'Galapagos' for TV sets). As it could not be excluded that pharmaceuticals might be produced in Florence, the jurisprudence required that the trademark be limited to the relevant country - that is, Italy. Therefore, the appeal was dismissed and protection was refused for the territory of Switzerland.

The decision shows that the jurisprudence and practice regarding geographical indications has become stricter in the past years. In 1993 the IGE accepted an application for the very same trademark, FIRENZA, by Opel Special Vehicles GmbH (international trademark No 598918) in Class 12 without any limitation; however, in 2006 the IGE refused protection to another international trademark, SUMO FIRENZA, on the ground that it was deceptive (international trademark No 852791 of Stamford Tyres Corporation Limited, also in Class 12). In summary, it is not necessary that a trademark be identical to a geographical indication for protection to be refused - it is sufficient that the mark is similar to, and evokes, the geographical indication.

Marco Bundi, Meisser & Partners AG, Klosters