No monopoly over Oktoberfest beer name
The Swiss Federal Administrative Court has dismissed an appeal by the Verein Münchener Brauerein eV (the Munich Breweries Association) against a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the collective word mark OKTOBERFEST-BIER for beer in Class 32 of the Nice Classification on the grounds that it lacked distinctiveness and should be kept free for use by third parties (Case B5169/2011, February 17 2012).
On appeal, the Munich Breweries Association argued that the mark had acquired secondary meaning through intensive use. It thus requested that an opinion poll be conducted as to the status of the mark. The case was subsequently remanded to the IGE. The IGE then confirmed the refusal after analysing the results of the poll. Again, the association appealed to the Administrative Court.
The court first turned to the question of whether OKTOBERFEST-BIER could gain secondary meaning at all, as it had to be kept free for use by competitors. Although the court did not answer this question, it concluded that OKTOBERFEST-BIER constituted a designation for a type of beer and, therefore, could be registered only if it had acquired secondary meaning. The court went on to analyse the results of the poll: 61.8% of the respondents were aware of the OKTOBERFEST-BIER mark, but only 6.1% associated it with the appellant. The poll showed that 31.1% of respondents associated the mark with Munich in general; however, even if these results were added (as they concerned a collective mark), this would not be sufficient to show secondary meaning. The appeal was thus dismissed.
Once more, a trademark which is registered in Germany and in the European Union has been rejected in Switzerland. This case highlights the strict practice of the Swiss authorities; this will also lead to an odd situation whereby everyone in Switzerland can use the mark OKTOBERFEST-BIER, which is clearly referring to the Munich beer festival, but use of the mark is restricted in Germany (and in the whole of the European Union).
Marco Bundi, Meisser & Partners, Klosters
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