Federal Administrative Court confirms that MERCI lacks distinctiveness

Switzerland
  • The IGE refused August Storck’s application for the extension of its international trademark MERCI to Switzerland for services in Classes 35, 38, 40 and 42
  • On appeal, the court found that MERCI would be understood merely as an expression of politeness
  • However, the court disagreed with the IGE’s finding that common expressions can never be distinctive, irrelevant of the claimed goods and services
     

The Swiss Federal Administrative Court has upheld a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the trademark MERCI (‘thank you’ in French) for services in Classes 35, 38, 40 and 42 (Case B-5806/2017, 27 June 27 2019).

Background

German company August Storck KG applied for the extension of its international trademark MERCI (No 1243689) to Switzerland for various services in Classes 35, 38, 40 and 42. On 11 September 2017 the IGE refused to register the trademark on the grounds that the mark:

  • was banal;
  • belonged to daily conversation; and
  • simply meant that the company wished to thank its clientele.

The fact that August Storck KG could demonstrate secondary meaning for the same MERCI mark for chocolate did not help for the services in question.

On 12 October 2017 August Storck filed an appeal against the refusal. The appellant argued that the sign was not banal or generally used for the claimed services. The well-known status of the trademark MERCI for chocolate was also an indication of the possibility of registering the mark for the services at issue. In addition, the mark could be registered in the European Union.

Decision

The court stated that MERCI would simply be understood as “thank you”. However, the fact that the sign belonged to the basic vocabulary did not, by itself, lead to the exclusion of protection - the claimed goods or services were also relevant. The court disagreed with the IGE’s finding that general and common expressions can never be distinctive, irrelevant of the claimed goods and services. According to the court, the goods and services are always relevant when determining whether a sign is distinctive. However, the court stated that the services in the relevant classes were dependent on the participation and feedback of customers. In this context, the sign MERCI would be understood merely as an expression of politeness. Therefore, the court considered that the sign was not distinctive.     

Comment

The decision highlights that there is no general exclusion for simple and commonly used signs: such signs can be protected, depending on the goods and services claimed.

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