FIREMASTER extinguished due to descriptiveness

The Swiss Supreme Court released last month its decision upholding the Swiss Federal Commission of Appeal for IP Rights' refusal to register the trademark FIREMASTER for "chemicals exhibiting flame retardant characteristics" in Class 1 of the Nice Classification (Case 4A5/2004, November 25 2004).

The Swiss Federal Institute of Intellectual Property rejected PABU Services Inc's application on the grounds of descriptiveness, as did the Commission of Appeal.

On further appeal, the Supreme Court affirmed. It held that the designation FIREMASTER reflected mainly the core characteristics of flame retardant chemicals. Hence, consumers would easily recognize the descriptive character of the designation.

The Supreme Court rejected PABU's claim that FIREMASTER should be registered under the principle of equal protection because other descriptive marks such as FIREFIT for asbestos fire protective clothing or PROTECTFIRE for fire extinguishers were registered in Switzerland. The court reasoned that the phrase 'firemaster' belonged to the public domain and, therefore, PABU could not make a claim for equal application of the law; it could only claim protection by way of an equal application of a constant unlawful practice. However, the court found that even if a few similar marks had been registered unlawfully in the past, such incidences did not amount to a constant unlawful registration practice. Accordingly, PABU could not claim a constitutional right of equal application of an unlawful practice.

Further, the court considered that foreign trademark registrations do not generally have a binding effect on the Swiss trademark register. Thus, a foreign registration for a mark similar or identical to the mark at issue would only be taken into consideration where the court had some doubt as to the registrability of the mark; however, FIREMASTER did not fall into that category.

Markus R Frick, Walder Wyss & Partners, Zurich