Little-known mountain cannot be geographical indication of Swiss origin
The Swiss Federal Administrative Court has reversed a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the sign STRELA as a trademark for non-Swiss goods on the grounds that the mountain Strela was an indirect geographical indication for the whole of Switzerland (Case B-5024/2013, February 18 2015).
Strela is the name of a Swiss mountain in the Canton of Grisons and of the associated alp and mountain pass. Therefore, in principle, Strela constitutes a geographical indication. However, pursuant to Swiss practice, a geographical name does not constitute an indication of geographical origin if it does not raise an expectation among the relevant consumers that the goods originate from a particular geographical location (see Article 47(2) of the Swiss Trademark Act and the 'Yukon' exceptions laid out be the Swiss Supreme Court in its landmark YUKON decision (BGE 128 III 454, cons 2.1)). For instance, a place that is not suitable for the manufacture of the relevant goods (eg, the Matterhorn for bananas) cannot raise an expectation that the goods come from that particular place.
There are no manufacturing facilities on the Strela mountain, as well as in the area surrounding the mountain, and the associated alp and mountain pass. However, the IGE had not applied the 'Yukon' exception, arguing that the Strela mountain was known among the relevant consumers and, therefore, qualified as an indirect geographical indication for the whole of Switzerland, where sufficient manufacturing facilities did exist.
The Federal Administrative Court rejected this argument, holding that it was not sufficient for the place at issue to be simply known among the relevant consumers. Rather, that place must be commonly known and be a typical Swiss landmark representing Swiss origin. A direct geographical indication of a place somewhere in Switzerland does not automatically constitute an indirect indication of origin for the whole of Switzerland. Otherwise, the 'Yukon' exception - under which places where no manufacturing facilities for the relevant goods exist do not constitute indications of geographical origin - would be invalidated. The Strela mountain is not sufficiently known as a Swiss landmark and it is not typical of Switzerland. Moreover, the region is not famous for the relevant goods in Classes 14, 18 and 25. Therefore, the court ruled that the sign STRELA was not geographically misdescriptive of goods in Classes 14, 18 and 25 not originating from Switzerland, and that it could be registered as a trademark.
Once again, the Federal Administrative Court curbed the IGE’s restrictive practice on geographic misdescriptiveness. In particular, with this decision, the court put a stop to the IGE’s attempt to trump the exception defined by the Supreme Court in YUKON - namely, that the names of places where the production of the relevant goods is impossible are not geographical indications. This is good news for trademark owners in Switzerland, although there is still a lot of ground to cover before the Swiss practice on geographical indications is in line with international standards, which rely on the reputation of the GI at issue with regard to the relevant goods/services.
Markus Frick and Benno Fischer, Walder Wyss Ltd, Zurich
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