Gillette's stylized G mark held to lack distinctiveness

Switzerland

The Swiss Administrative Court has upheld a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had refused to register The Gillette Company’s stylized 'G' as a trademark for goods in Classes 3 and 8 of the Nice Classification on the grounds that it lacked sufficient distinctive character (Case B-55/2010, April 23 2010).

The Administrative Court first referred to the decision in M-JOY (Case BGE 134 III 314), in which the Federal Supreme Court had held that, as a general rule, single letters are not protectable as trademarks because they are devoid of distinctive character and should be kept free for use by competitors (for further details please see "Capital letter may acquire secondary meaning"). In the present case, it was undisputed that Gillette’s G mark was mainly based on the capital letter 'G'. The Administrative Court thus examined whether the graphical design of Gillette’s stylized 'G' changed the overall impression of the mark in such a way that the general public would perceive it as a distinctive sign, and not merely as a letter of the alphabet.

The Administrative Court held that Gillette’s G mark resembled - apart from the slight rotation to the left - commonly known styles of the letter 'G'. In particular, the court enumerated several fonts used in electronic word processing which contained similar design elements. The court concluded that the rotation to the left was an obvious style element which did not add anything unexpected or extraordinary to the letter 'G'.

Signs that belong to the public domain under Article 2(a) of the Swiss Trademark Act may be registered upon proof that the sign has achieved a secondary meaning. However, Gillette had not submitted sufficient evidence to support such findings. The court took the occasion to confirm that clear evidence is necessary in order to prove that a sign has acquired secondary meaning. Hence, Gillette was required to prove that its stylized 'G', as an isolated sign, had acquired secondary meaning - and not merely that the G mark had been frequently used in connection with the name Gillette.

Finally, the court dismissed further arguments brought forward by Gillette. First, it reiterated that registration of a mark in other jurisdictions (eg, the G mark is registered as a Community trademark under Registration 007104904) could serve as circumstantial evidence in controversial domestic cases. In the court’s view, the instant case was rather clear-cut. Second, Gillette’s argument that its mark should be registered based on the principle of equal treatment was not conclusive. The court considered that the registrations submitted by Gillette were not sufficiently similar to the G mark to support this argument.

In conclusion, the court confirmed that single letters may be registered as trademarks in Switzerland only if the applicant can prove that the design of the mark is extraordinary or that the mark has acquired secondary meaning.

Demian Stauber, Walder Wyss & Partners, Zurich

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