LAURA BIAGOTTI AQUA DI ROMA held to be deceptive
On July 17 2004 Eurocos Cosmetic GmbH and its assignee Procter & Gamble International Operations SA applied to extend to Switzerland the international registration for the trademark LAURA BIAGOTTI AQUA DI ROMA (International Registration 832,230) for "toilet soaps, perfumery, essential oils, cosmetics, fragrance derived toiletries, preparations for the cleaning, care and beautification of the skin, scalp and hair, and deodorants for personal use" in Class 3 of the Nice Classification. The IGE refused the application on the grounds that the trademark would be misleading for goods not originating from Italy.
Eurocos and Procter & Gamble appealed to the Administrative Court, claiming that the term 'Roma' would not be seen as a geographical indication under Article 47 of the Trademark Protection Act. They argued that the relevant consumers would perceive 'Roma' as a symbolic indication of a particular lifestyle.
Under Article 2(c) of the act, misleading signs may not be granted trademark protection in accordance with the Paris Convention for the Protection of Industrial Property. The court thus considered whether the term 'Roma' used in connection with the goods at issue would be perceived as an indication of geographical origin by the relevant public. According to established case law (see YUKON (BGE 128 III 454)), a sign including a geographical location will not be perceived as an indication of geographical origin if:
- the place is unknown in Switzerland;
- the sign has a clear and direct symbolic character;
- the place is obviously unsuitable for the production of the goods in question;
- the sign is a designation of type;
- the sign has acquired secondary meaning; or
- the sign has become a denomination for a type of goods (eg, eau de Cologne).
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