MAGNUM application rejected for milk products and non-alcoholic drinks

The Swiss Federal Administrative Court has upheld a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had refused to extend protection to Switzerland of the international registration for the mark MAGNUM (International Registration 866199) for "milk and milk products" and "non-alcoholic drinks, syrups and other preparations for making beverages" (Case B-2514/2008, May 25 2009).
Unilever NV markets ice cream under the trademark MAGNUM. Unilever sought to extend protection to Switzerland of its international registration for the MAGNUM mark, which covers "milk and milk products" in Class 29, "edible ices" in Class 30 and "non-alcoholic drinks, syrups and other preparations for making beverages" in Class 32 of the Nice Classification. The IGE granted the application with regard to goods in Class 30, but refused to register the mark for the other goods.
In particular, the IGE stated that the word 'magnum' will be understood in the French-speaking part of Switzerland as identifying a bottle that holds the equivalent of two standard bottles. As a result, consumers will perceive the mark as a direct reference to the packaging, nature or characteristics of the relevant products. The stylized script and gold colour used in the mark were deemed insufficient to make it registrable. The IGE also held that the term 'magnum' had to be kept free for use by competitors. Prior trademark registrations in other countries were not taken into account.

Unilever appealed, arguing that use of magnum-sized bottles for non-alcoholic beverages and milk products was unusual. Moreover, it claimed that the stylized script and gold colour added to the distinctiveness of the mark.
The Federal Administrative Court held that various French and Italian dictionaries defined the word 'magnum' as a large bottle of champagne, wine, spirits, mineral water or fruit juice which holds the contents of two normal bottles (ie, one-and-a-half litres). Although an online search for products offered by Swiss supermarkets failed to show that the term 'magnum' was used for non-alcoholic beverages, the court held that the average consumer in the French and Italian-speaking regions of Switzerland might perceive the term as indicating a large container for non-alcoholic beverages. Moreover, consumers would assume that milk bearing the trademark MAGNUM would be sold in large bottles. This also applied to yoghurt, cream and whey, as consumers might perceive the trademark MAGNUM as a reference to the size of the bottle or pot in which the products are sold. The court also noted that according to previous case law, registration will be refused for the whole class heading if the mark is not registrable for certain of the products in that class.
In addition, the court held that the stylized script and gold colour were insufficient to render the mark registrable. Moreover, since the court did not consider this to be a borderline case, the foreign trademark registrations could not be taken into account.
The court thus dismissed the appeal.
While the court cannot be faulted for holding that the word 'magnum' may relate to non-alcoholic beverages, the conclusion that this term might be used to identify large bottles for milk and milk products appears far-fetched. It is unlikely that milk producers will want to use the term 'magnum', which is commonly associated with champagne and wine, to identify large milk containers. Arguably, there was thus no need to keep the term free for use by competitors in this sector.

It is also unrealistic to assume that consumers would believe that milk bearing the MAGNUM mark will be sold in large containers. More plausibly, consumers would consider that milk sold under the MAGNUM mark is a line extension of the well-known ice cream brand (eg, denoting flavoured, ice-cold milk drinks and shakes). Moreover, it is inconceivable that yoghurt, cream and whey would be sold in one-and-a-half litre bottles, since these products have a short shelf-life and must be consumed rapidly. On the contrary, yoghurt and cream are commonly sold in carton, plastic or glass containers of no more than 500 grams or half a litre. Therefore, consumers would be likely to believe that the manufacturer of Magnum ice cream had decided to market a yoghurt-based version of its ice cream.

It is interesting to note that 46 out of the 48 countries designated in the international registration for MAGNUM have allowed the registration of the mark for goods in Classes 29 and 32 - including the Benelux, which applies strict criteria with regard to registration. 
The decision may be appealed to the Swiss Federal Court.

Alfred Strahlberg, Strahlberg & Partners, Wabern

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