NEW WAVE is not descriptive of clothes

The Federal Administrative Court has allowed an appeal against the refusal by the Federal Institute of Intellectual Property (IGE) to register the mark NEW WAVE for goods in Class 25 of the Nice Classification.

Swedish company New Wave Group AB applied to extend protection to Switzerland of its Norwegian registration for the mark NEW WAVE for clothes and shoes (International Registration 832599). The IGE refused to register the trademark. The IGE held that NEW WAVE was perceived by the relevant consumers as a music or fashion style of the late 1970s. In light of this, the IGE found that the trademark was not distinctive and should be kept free for competitors.

The Federal Administrative Court overturned the IGE's decision. The IGE had based its decision on, among other things, the following quotation from a website: "New wave was the new punk. This was fashion with all the aggressiveness and menace of punk". The court agreed that the term 'new wave' applied to a music style of the late 1970s, but found that it was not descriptive of clothes, especially as the quotation of the IGE was supported by no other sources.

The court cited several trademarks consisting of musical terms which - in line with the practice of the IGE - were registered for clothes, including:

• JAZZ (Registration 374'098);
  
  
• BLUES (Registration P-302'754);
  
  
• FREE SOUL (Registration P-423'741); and
  
  
• MODERN SOUL (Registration 505'848).

These trademarks were allowed since the relevant consumers would not expect the clothes to have a specific style or character. The court held that the same applied to NEW WAVE. However, the court pointed that certain music styles may be descriptive if they involve specific expectations (eg, the mark FLAMENCO would be descriptive of the costumes used for the dance accompanying the Spanish musical genre flamenco).

After examining the meaning of the words 'new' and 'wave', the court concluded that the trademark NEW WAVE was not descriptive of clothes and allowed the registration of the trademark for goods in Class 25.

The decision highlights the fact that a mark may be descriptive of a certain type of goods (music in this case), but not of others. It is not expected that the decision will be appealed to the Supreme Court; however, the decision is not yet final.

Marco Bundi, Meisser & Partners, Klosters