Federal Administrative Court considers acquired distinctiveness and consumer perception

The Federal Administrative Court has held that there was no likelihood of confusion between the marks AIR-FLOW and AIR FLOSS (Case B-1493/2013, December 2 2013).

The earlier mark AIR-FLOW was registered and used for instruments for polishing teeth aimed at dentists (ie, the professional market). Philips, on the other hand, used the later AIR FLOSS mark for electric toothbrushes (cleaning instruments that use a stream of air and water) aimed at the consumer market. The proprietor of the AIR-FLOW mark opposed Philips' application for AIR FLOSS, but was unsuccessful.

The proprietor of the AIR-FLOW mark tried to show that its mark had acquired distinctiveness (erhöhte Verkehrsgeltung) among Swiss dentists. It demonstrated that it had used the mark for over 10 years and had sold about 2,000 of its instruments in Switzerland - with only 4,000 dental offices in the country, this indicated that close to 50% of all dental offices used the product (the court did point out that some of the instruments could have been exported). However, the court noted that the brochures, advertising material and invoices produced did not show the perception of the sign AIR-FLOW by the relevant consumers.

Arguably, this reasoning strikes as strange. The perception of the consumers was the relevant enquiry, but short of questioning the relevant consumers (ie, by conducting a survey), no evidence of acquired distinctiveness would ever show the perception of the consumers. However, evidence of advertising expenditures, market share and revenue, among other things, will allow inferences on the perception of the consumers. The court has so far stressed that, while consumer surveys may be the best way to show the consumer perception of a sign, they are by no means the only way. If the court dismisses all evidence of advertising, market share and revenue with the argument that such evidence cannot show consumer perception, then trademark owners have no other choice but to commission a consumer survey, which is often expensive.

In view of the weak distinctiveness of the signs and the different users of the products, the Federal Administrative Court, like the Intellectual Property Office before it, found that there was no likelihood of confusion and dismissed the opposition.

Mark Schweizer, Meyerlustenberger Lachenal, Zurich