GB is a geographical indication, says court

The Federal Administrative Court has dismissed an appeal against a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the trademark GB for goods and services in Classes 7, 17, 19, 26 and 38 of the Nice Classification on the grounds that the abbreviation 'GB' is a geographical indication (Case B-386/2008, March 10 2009).

German company Groz-Beckert KG successfully applied for the registration of the mark GB as a Community trademark for goods and services in Classes 7, 17, 19, 26 and 38. It then sought to obtain an international registration designating Switzerland and other countries.

The IGE refused to register the mark in Switzerland on the grounds that the trademark merely consisted of the common abbreviation 'GB', which is understood as meaning 'Great Britain' in English or 'Grande-Bretagne' in French. According to the IGE, the mark described the nature, origin or characteristics of the goods and services. The IGE also concluded that the sign should be kept free for use by competitors since it was not associated with a particular business. Finally, the IGE held that the mark was geographically deceptive, since:
  • the goods and services covered by the application were not limited to British goods and services; and
  • Groz-Beckert had no relation with Great Britain.
Groz-Beckert appealed, arguing that although 'GB' was a country abbreviation code, it was not a geographical indication. It further stated that the mark had been registered in Great Britain and other EU countries. Groz-Beckert also alleged that the most common abbreviation was not 'GB', but 'UK'. Finally, Groz-Beckert pointed out that 'GB' was merely the abbreviation of its company name and had other meanings, such as 'gigabyte'. 

The Administrative Court disagreed and held that the relevant Swiss consumer would understand 'GB' as a geographical indication - especially as the mark contained no additional elements. According to the court, even if 'UK' is a more common abbreviation (especially in English-speaking countries), this did not apply to Switzerland. Therefore, the mark was a direct geographical indication. Finally, the court highlighted that the use of geographically deceptive trademarks is punishable under Article 64(1)(c) of the Trademarks Act. Since Groz-Beckert admitted that it could not provide prima facie evidence of secondary meaning, the appeal was dismissed.

This decision shows once more that the practice of the Office for Harmonization in the Internal Market is less strict than that of the IGE, especially with regard to geographical indications. Foreign decisions are usually not taken into consideration, since only the perspective of the Swiss consumer is thought to be relevant. 
Marco Bundi, Meisser & Partners, Klosters

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