LANCASTER held to be geographically deceptive
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In Lancaster v Federal Institute of Intellectual Property (Case B-5779/2007, November 3 2008), the Federal Administrative Court has upheld a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the trademark LANCASTER for fashion goods.
Lancaster, a French fashion company, applied for the registration of the trademark LANCASTER for goods in Classes 9, 14, 18 and 25 of the Nice Classification. The IGE rejected the application on the grounds that the mark was descriptive and deceptive.
In particular, the IGE stated that Lancaster is the name of a city in the United Kingdom with more than 40,000 inhabitants. Due to the city's importance from an economic, cultural and historical point of view, average Swiss consumers would immediately make a link between the mark and the city of Lancaster. Moreover, the word 'Lancaster' is also a surname, although it is not in common use in Switzerland. The famous actor Burt Lancaster died more than 15 years ago and is rarely referred to only by his surname. As a result, the geographical meaning of the mark took precedence over any other meaning. Therefore, the IGE concluded that the mark was deceptive insofar as the goods did not originate from the city of Lancaster.
The Federal Administrative Court dismissed Lancaster's appeal. The court refused to take into account the fact that the IGE had accepted Lancaster's application for the registration of the mark LANCASTER PARIS (the word 'Paris' being written in smaller type and in a slightly stylized script) for goods originating from France.
Interestingly, the Lancaster Group (Germany) owns Swiss registrations for the trademark LANCASTER, which seems to suggest that the practice of the IGE is not consistent.
Alfred Strahlberg, Strahlberg & Partners, Riga
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