Federal Administrative Court develops jurisprudence on opinion polls

Switzerland

The Swiss Federal Administrative Court has held that the trademark AUS DER REGION. FÜR DIE REGION. ('From the region. For the region.') belonged to the public domain and that it had not acquired distinctiveness through use pursuant to Article 2(a) of the Swiss Trademark Act (Decision B-8240/2010, February 27 2012).

Claimant Migros-Genossenschafts-Bund, Switzerland's largest supermarket chain, applied for the registration of AUS DER REGION. FÜR DIE REGION. in Classes 29, 30, 31, 32 and 35 of the Nice Classification. The Swiss Federal Institute of Intellectual Property decided that the trademark was part of the public domain and that the evidence presented did not credibly demonstrate that the slogan had acquired distinctiveness through use.

The Swiss Federal Administrative Court upheld the decision. The court clarified that the relevant trade circles would understand the slogan 'From the region. For the region.' as meaning that the goods originated from the same region as that in which they were sold. The slogan mainly described the chain of production and distribution of the goods and, therefore, was directly descriptive. Moreover, the punctuation at the end of both clauses did not add sufficient distinctive character. Additionally, as certain consumers have more confidence in products originating from their own region, the slogan amounted to advertising. The court also made it clear that the mark should be kept free for use in the trade, as both clauses amounted to nothing more than a basic product information that was indispensable in the market.

The court then considered whether the slogan had acquired distinctiveness through use for the goods for which registration was sought under Article 2(a) of the Trademark Act. The court noted that the mark was only infrequently used purely as a word mark - it was usually embedded in one of five individually designed logos, which combined the text with graphic elements and, occasionally, additional text. The court acknowledged that two of the logos had, in fact, acquired distinctiveness in German-speaking Switzerland (excluding Engadin) due to the use made of them. However, due to insufficient evidence, the court did not examine whether the word mark as such - without the logos - had also acquired distinctiveness. The court found that the evidence of use of the slogan was not sufficiently substantiated. In many of the documents provided as evidence, the slogans were illegible and the date of use was not evident.

In addition, the opinion polls submitted by the claimant did not convince the court that the slogan had acquired distinctiveness through use. The court confirmed and further developed the jurisprudence established in its recent OKTOBERFEST-BIER decision (B-5169/2011). It stated again that the cognitive value of opinion polls suffers if the questions are suggestive and do not objectively ascertain that a mark is associated with a particular company. According to the court, in the case at hand, the questions posed in the opinion polls could not establish the existence of an association between the mark and the claimant. The court further held that information relating to the fieldwork, the interviews and the organisation, as well as the original questionnaire and a signed summary, were missing. Additionally, it was not evident whether the survey covered the whole of Switzerland or only certain regions. The court thus concluded that the opinion polls did not meet the formal requirements necessary for them to be included in the evidence.

The court also clarified that, in order to demonstrate acquired distinctiveness of a slogan, it is insufficient to consider use of the slogan in only one of the languages of Switzerland. In the case at hand, the evidence did not show that the mark AUS DER REGION. FÜR DIE REGION had acquired distinctiveness through use in the French- and Italian-speaking parts of Switzerland.

Roman Bretschger, Walder Wyss AG, Zurich

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