GOTTHARD held to be invalid for fuels

The Swiss Federal Court has held that the trademark GOTTHARD for fuels was invalid (Case 4A_324/2009, October 8 2009).

The Gotthard pass is a well-known high-mountain pass in the Swiss Alps. 'Gotthard' is also the name of the surrounding region.
A Swiss company based in the Gotthard region was the owner of the trademark GOTTHARD for a large number of goods and services, including fuels. The mark was a complex sign consisting of:

  • the word 'Gotthard'; 
  • a black triangle resembling a mountain; and
  • a black ellipse resembling a cloud ring above the triangle.
The trademark owner sued Oeko-Energie AG Gotthard, an energy company domiciled in the Gotthard region, for infringing its trademark rights by using the word 'Gotthard' as part of its company name. Oeko counterclaimed for a declaration of invalidity of the GOTTHARD mark for fuels. The Superior Court of the Canton of Uri upheld the counterclaim and held that the mark was invalid. 
On appeal, the Swiss Federal Court agreed with the lower court that the word 'Gotthard' could serve to designate the geographical origin of the goods, and thus fell within the “public domain” under Article 2(a) of the Trademark Act. The court pointed out that certain fuels - namely, timber - are produced in the Gotthard region. Therefore, it could not be excluded that natural gas could also be found in the Gotthard region.
The trademark owner argued that the figurative elements of its mark (the stylized mountain and the ellipse) would distract consumers from the notion of 'region'. The Federal Court disagreed, finding that the design could be perceived as a symbol of the whole region, and not merely as a representation of the Gotthard pass.
The case highlights the fact that trademarks containing a generic term may be protected only if that term is perceived as a secondary element of the mark. Here, the court considered that the word 'Gotthard' was the dominant element of the mark at issue. 
The appeal was thus dismissed.

Peter Heinrich, Streichenberg Attorneys at Law, Zurich

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