MONTESSORI teacher taught lesson on generic use

The Swiss Federal Court has confirmed its strict criteria to determine when a trademark has become generic, finding that the mark MONTESSORI for teaching services had not become descriptive of a particular teaching method in Switzerland (Case 4C165/2003 (BGE 130 III 113).

The Swiss Montessori Association, a member of the International Montessori Association, which promotes the teaching method developed by Maria Montessori in the early 20th century, filed an application for an injunction enjoining a kindergarten head teacher from using the name Montessori for her establishment. The Swiss association, which owns registrations for the mark MONTESSORI and grants licences to selected institutions and qualified teachers that meet its standards, claimed that the teacher's unauthorized use of the Montessori name was infringing its trademark.

The High Court of the Canton of Lucerne granted the association's request for an injunction. It rejected the teacher's claim that the name Montessori had become descriptive of a teaching method and was considered generic in the United States. The teacher appealed.

The Swiss Federal Court upheld the decision. It confirmed its practice in connection to generic signs and names, which is as follows:

• Only the circumstances in Switzerland are relevant and, hence, decisions outside Switzerland are not prejudicial.
  
  
• A registered trademark is no longer protected when all parties participating in the manufacturing, distribution and purchase of the goods or services to which the mark applies no longer consider the trademark as an indication of origin for a specific business. This may also happen to family names (eg, Duden for dictionaries).
  
  
• An unregistered sign or name falls into the public domain if a certain group - for example experts or purchasers - use the sign in a generic manner.
  
  
• The mark can only be considered generic if it is used in a descriptive manner in all the parts of Switzerland in which it is in use.
  
  
• The generic status of a sign must not be accepted easily.
  
  
• The burden of proof falls on the party that claims that the mark has become generic.

This high threshold for finding that a trademark or distinctive sign has become generic explains why Swiss courts have downgraded only a few signs from trademarks to generic terms. These include 'saccharin' for sweeteners, 'spandex' for elastomer synthetic materials and 'vaseline' for petroleum jelly.

J David Meisser and Bettina Bochsler, Meisser & Partners, Klosters