LAURA BIAGOTTI AQUA DI ROMA held to be deceptive

The Swiss Administrative Court has affirmed a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to extend protection to Switzerland of the international registration for the figurative mark LAURA BIAGOTTI AQUA DI ROMA for perfumery on the grounds that such registration would be deceptive for goods not originating from Italy, even though the mark had been registered in over 20 member states of the Madrid Union (Case B-1611/2007, October 7 2008).

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).
The court concluded that none of these requirements had been met in the case at hand, since the term 'Roma' clearly referred to the Italian capital and would thus be perceived as an indication of geographical origin. The court further stated that the term 'Roma' together with the preposition 'di' ('from Rome' in Italian) clearly and directly referred to the geographical origin of the goods and lacked any symbolic character. However, the court did not comment on whether the mark was a designation of type (eg, 'Monza' in the trademark TAG HEUER MONZA for watches is expressly mentioned as a designation of type in the Trademark Guidelines of the IGE).
In a side note, the court suggested that the IGE should limit the list of goods not only to the country (eg, Italy), but also to the particular region or city (eg, Rome) in cases involving simple geographical indications. Presently, such restrictions are required only where the mark includes a qualified geographical indication which raises the public's expectations as to quality, reputation or other features arising from the origin of the goods.
The decision confirms the restrictive approach followed in Switzerland in relation to geographical indications. It remains to be seen whether the IGE will follow the suggestion of the court. 
It is still unclear whether Eurocos and Procter & Gamble intend to appeal to the Federal Supreme Court.
Benedikt Schmidt and Raphael Kraemer, Meisser & Partners, Klosters

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