No acquired distinctiveness for POST

The Swiss Administrative Court has affirmed a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the trademark POST on the grounds that it was devoid of distinctive character (Case B-958/2007, June 9 2008).
Die Schweizerische Post (the Swiss Post), an institution organized under public law, sought to register the word mark POST for various goods and services in Classes 9, 16, 20, 22, 28, 35, 36, 38, 39, 40, 41, 42 and 45 of the Nice Classification. The IGE allowed the registration only for certain goods and services not related to mail services (eg, watches, computer software handbooks, car-sharing services and sporting activities). With regard to the other goods and services covered by the application, the IGE held that the mark POST was merely a descriptive term.
The IGE also dismissed the argument that the term 'post' was clearly associated with the Swiss Post. According to the IGE, the mark POST could be associated with any mail services provider. It concluded that the mark:
  • lacked distinctiveness;
  • belonged to the public domain; and
  • had to be kept free for use by competitors. 
The IGE then considered whether the mark had acquired distinctiveness through use. The IGE held that the mark POST was used in conjunction with other figurative elements and thus had to be considered as a logo, rather than a word mark. In addition, the Swiss Post provided a survey showing that 44% of the companies and 29% of the individuals interviewed associated the term 'post' with 'the postal company'. However, the IGE found that:
  • the results of the survey were insufficient to establish secondary meaning; and
  • it was questionable whether 'the postal company' actually meant the Swiss Post. 
The Swiss Post appealed to the Administrative Court. The court dismissed the appeal, holding that:
  • the survey did not represent prima facie evidence of secondary meaning, since it did not relate to specific goods or services; and
  • a 50% recognition benchmark should be met in order to establish secondary meaning. 
Furthermore, the Administrative Court concluded that the fact that the Swiss Post had held a monopoly over the mail services market for many years was insufficient to establish secondary meaning. Finally, evidence of secondary meaning was excluded with regard to several (mainly postal and related) services, since the term 'post' had to be kept free for use by competitors.
The decision is in line with current practice. The term 'post' for mail services is no longer associated exclusively with the Swiss Post, as other mail services providers use this term. The decision may be appealed to the Supreme Court.
Marco Bundi, Meisser & Partners, Klosters

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