‘Frankonia’ not merely a geographical indication

The Swiss Federal Administrative Court has allowed an appeal by German company Frankonia Handels GmbH & Co KG against a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had found that the trademark FRANKONIA lacked distinctiveness for retailing services in Class 35 of the Nice Classification because it was merely a geographical indication (Case B-5658/2011, May 9 2012).

The IGE had refused to register the international trademark FRANKONIA (No 1012409), holding that it was phonetically and visually very similar to 'Franconia', a term that is commonly used to refer to the eastern part of former Francia in Germany. Therefore, the IGE found that the mark lacked distinctiveness.

The applicant appealed to the Administrative Court. The latter held that the term 'Franconia' and the Latin word 'franc' could have both geographical and non-geographical meanings. It went on to define the German territory of the Franks, a Germanic tribe, until the establishment of the region of Southern Germany. Further, it pointed out that several towns in the United States bear the name of Franconia. As a non-geographical indication, 'franc' ('frank' in German) could be understood as 'open' or 'honest'. Although 'frank' originates from, and may refer to, the Germanic tribe, the court found that, nowadays, this link would rarely be established. As such, the sign was regarded as distinctive, and not as a mere geographical indication. Further, since the trademark was registered in the European Union, it was not necessary to keep it free for use by competitors. The IGE was thus ordered to register the mark.

The decision highlights once more the strict approach followed by the IGE, while the Administrative Court is more lenient with regard to (alleged) geographical indications. Even if some associations with a certain country exist, the prevailing meaning of the mark could still make it distinctive.

Marco Bundi, Meisser & Partners AG, Klosters