Decision once again demonstrates strictness of Swiss practice
The Swiss Federal Administrative Court has dismissed an appeal by Demp BV, which sought to register the word mark NOBLEWOOD for goods (including paints, building materials and wall coverings) in Classes 2, 19 and 27 of the Nice Classification (Case B-283/2012, December 13 2012). The court upheld an earlier decision of the Federal Institute of Intellectual Property (IGE) finding that the trademark lacked distinctiveness for some of the goods and should be kept free for use by third parties.
The IGE refused to extend protection of the international trademark NOBLEWOOD (No 999365) for all claimed goods, except “terrace tiles”, on the grounds that it lacked distinctiveness. It held that all the other goods could consist of “noble, precious or magnificent wood” and, therefore, the mark would undoubtedly describe the goods (the goods could either be used on wood or consist of wood). “Terrace tiles”, on the other hand, were not considered to consist of wood, so registration was accepted for these goods. The IGE issued a final refusal which was subsequently appealed by Demp.
On appeal, Demp argued that the relevant trade circles - such as professionals and interested consumers - would have only a limited understanding of the English words 'noble' and 'wood'. These circles could understand the mark in various ways, and would not perceive it as meaning “noble, precious or magnificent wood”. Furthermore, since the word mark NOBLE had already been accepted for registration by the IGE, the mark at issue should also be accepted.
The Administrative Court noted that the term 'noblewood' was novel and did not exist as such. However, it further stated that 'noble' would be understood as meaning 'magnificent' or 'precious'. As the English word 'noble' is identical to the French word 'noble' and very close to the German word 'nobel', the court found that the relevant consumers would understand it. Therefore, the court did not consider whether 'noble' was part of the basic English vocabulary. The word 'wood', on the other hand, was clearly part of the basic English vocabulary. The court thus held that the mark would be understood as meaning 'precious wood' and lacked distinctiveness.
With regard to the claim that other NOBLE marks had already been registered by the IGE, the court stated that these marks covered different goods and, therefore, were not comparable to the mark at issue. Even the successful registration of NOBLEWOOD as a Community trademark was not considered sufficient to warrant the registration of the mark in Switzerland.
Although the decision may seem strict (especially from an EU perspective), it is in line with Swiss jurisprudence. Even made-up signs cannot be registered if the words have a clear meaning and describe the goods or services. The decision may still be appealed to the Swiss Supreme Court.
Marco Bundi, Meisser & Partners AG, Klosters
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