Device mark including official emblem takes precedence over earlier mark

The Swiss Federal Administrative Court has dismissed an opposition filed by the owner of the mark GALILEO for goods in Class 9 of the Nice Classification against the registration of a device mark including the word 'Galileo' for goods and services in Classes 9, 16 and 42 (Case B-3766/2007, January 30 2009).
Galileo Joint Undertaking, an international organization established by the Council of Europe, sought to register the device mark for a European satellite positioning system. The mark consisted of:
  • the words 'Galileo Joint Undertaking' ('Galileo' being written in white capital letters); and
  • a device similar to the official emblem of the council (a dark blue square with a white disc surrounded by 12 five-pointed stars in an ellipse).
The opponent used the GALILEO mark for a reservation system for the travel industry.
The Swiss Federal Institute of Intellectual Property (IGE) dismissed the opposition, holding that the official emblem of the council was protected under Article 6bis of the Paris Convention for the Protection of Industrial Property and the Swiss law on the protection of the names and emblems of the United Nations and other international organizations.

On appeal, the Swiss Federal Administrative Court affirmed the decision of the IGE. The court held that official emblems take precedence over earlier trademarks rights in that such rights cannot be invoked against the use and registration of a mark containing an official sign. According to the court, this was also true in an opposition procedure. Therefore, the scope of protection of an earlier mark may be limited by the protection of an official name or emblem. The court concluded that since the word 'Galileo' was the only common element between the marks, there was no likelihood of confusion among the public. 
Interestingly, the opponent argued that the dismissal of its opposition would amount to the expropriation of its trademark rights. However, according to the court, the act on the protection of names and emblems of international organizations provided a sufficient legal basis for rejecting the opposition. Further, the court pointed out that the dismissal of the opposition did not amount to a total expropriation of the opponent's trademark rights, but only limited the latter's right to prevent a third party from using a similar mark. Therefore, the court concluded that there was no need to compensate the opponent. 
Peter Heinrich, Staiger Schwald & Partner Ltd, Zurich

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