Japan Tobacco successfully prevents registration of mark containing eagle device

Switzerland

The Swiss Administrative Court has upheld Japanese cigarette manufacturer Japan Tobacco Inc's opposition to the registration in Switzerland of the 3D mark FX BLUE STYLE EFFECTS (Case B-3812/2012, November 25 2014).

On May 10 2011 Harrington Development Inc applied to register the following trademark for cigarettes and others smokers' articles in Class 34 of the Nice Classification:

The application was opposed by Japan Tobacco on the basis of two prior registrations - one device mark and one word-and-device mark - claiming protection for goods in Class 34:

 

At first instance, the Swiss Federal Institute of Intellectual Property admitted the opposition, holding that the products were identical and that the image of the bird – being the fanciful element with regard to the goods in question – had been copied in its entirety and was predominant in the mark applied for. It further reasoned that, even though the relevant public might notice the differences between the marks (ie, the element 'FX'), it may make wrong assumptions as to the products' affiliation. Harrington Development appealed the decision.

First, the Swiss Federal Administrative Court addressed the issue of the consumers' attentiveness, stating that the products were primarily aimed at actual and potential smokers of over 16 years of age and that, according to Swiss case law, no particular level of attentiveness could thus be presumed. The court further affirmed that some of the goods were identical (cigarettes) and some were similar (remaining products).

Turning to the signs at issue, and comparing the mark applied for to Japan Tobacco's eagle device mark, the court stated that the bird had been copied and represented against a light background on the top right-hand corner of the front face of the cigarette packet, and thus came to the conclusion that it was a dominant element in the mark applied for. The court also took into consideration that there were similarities between the depictions of the birds themselves. Thus, the court reasoned that there was at least a weak visual similarity between the signs.

The court further held that the verbal element 'style effects' in the mark applied for aimed to give consumers a good image of themselves. Further, the element 'FX' had no particular meaning. The element 'blue' denoted a 'light' product compared to products containing more nicotine. The winged character, however, which represented liberty and relaxation, was the dominant element of the mark applied for, and gave the parties' marks a certain similarity on the semantic level. Even the presence of the element 'FX' and the image of the globe did not change the fact that the bird was dominant in the mark applied for.

Harrington Development referred to the decision of the Court of Justice of the European Union (ECJ) in Neuman v José Manuel Baena Grupo SA (Joined Cases C-101/11 P and C-102/11 P), arguing that, in the light of this decision, the numerous differences between the marks at hand would exclude any risk of confusion. The Federal Administrative Court rejected the argument, stating that:

  1. the Swiss authorities are not bound by ECJ decisions; and
  2. in Neuman, the comparison concerned only device marks, which sought protection for goods that were not similar in any way to the goods in the present case.

Before the Federal Administrative Court, Japan Tobacco had produced extensive documentation in order to prove the extended scope of protection of its eagle device mark, acquired through intense commercialisation of its Winston products. It claimed, among other things, that the image of an eagle has been displayed on the package of Winston cigarette since the 1980s. Japan Tobacco further stressed that the intense combined use of a word mark and a separate device mark would result in the reputation of one mark extending to the other.

Despite holding that, according to the evidence produced, the eagle had been an almost permanent fixture on Japan Tobacco's products, the Federal Administrative Court left the question open of whether the eagle device mark possessed an extended scope of protection. It reasoned that that mark consisted of a white-headed eagle, which constituted an imaginative mark with a normal scope of protection. The court came to the conclusion that, in light of the fact that the birds in both marks were flying, facing to the right and were predatory birds, there was at least an indirect risk of confusion between the marks – while the public might distinguish between the marks, it could still presume that there were affiliations between them that did not actually exist; in particular, it could believe in the existence of a series of marks.

Given that a risk of confusion was found with regard to Japan Tobacco's eagle device mark, Harrington Development's registration was cancelled and the Federal Administrative Court did not consider Japan Tobacco's word-and-device mark.

It is questionable whether this conclusion is correct. As a general rule, when assessing the similarity between trademarks under Swiss trademark law, the signs must be considered in their entirety and not by comparing their various elements separately. The Federal Administrative Court clearly focused on the eagle element, despite the fact that it was relatively small in the mark applied for compared to the rather dominant element 'FX', which, according to the court itself, has no specific meaning (and thus has a certain distinctive character). In addition, the court stated that the eagle element represented liberty and relaxation, which – in connection with cigarettes and smoker's articles – is not particularly genuine. If the court had considered in depth whether Japan Tobacco's eagle element had acquired enhanced distinctiveness through extensive use, and if the court had answered this question in the affirmative, then the court could have come to this conclusion.

Although this decision seems to be in line with the ECJ's judgment in THOMSON LIFE (Case C-120/04), the Federal Administrative Court seems to have failed to take serious consideration of a number of elements of the mark applied for that are arguably distinctive.

Patrick R Schutte, Wild Schnyder AG, Zurich

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