Only classic trademark law arguments will be considered in opposition proceedings

Switzerland

The Swiss Federal Administrative Court has rejected an appeal against a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had upheld an opposition by the owner of the earlier registered trademark HOFER against the registration of the figurative mark HÖFER FAMILY OFFICE (Opposition B-7387/2010, December 9 2011).

The earlier trademark HOFER consists of a family name that is common in German-speaking countries ('hof' meaning 'courtyard' or 'farm'). The mark is registered for a number of goods and services, including "insurance; financial services; monetary services; real estate services" in Class 36 of the Nice Classification. The opposed mark HÖFER FAMILY OFFICE included a device consisting of an upside-down triangle. The later mark covered services in Class 36, namely "insurance; financial services; monetary services; real estate services".

The IGE upheld the opposition. On appeal by the owner of the HÖFER FAMILY OFFICE mark, the Swiss Federal Administrative Court confirmed.

The court first noted that the characteristic elements of both trademarks were family names. It pointed out that, in opposition proceedings, only arguments based on ordinary trademark law are allowed, while arguments based on civil and trade name law or the rules on famous trademarks are excluded. Therefore, the situation would be different before a civil court, as a defendant in a trademark infringement action could also rely on arguments based on the abovementioned laws and rules.

The court further noted that personal names can be registered as trademarks and are protected against infringing uses. Protection, however, does not extend beyond the scope of use as a trademark - if a third person bearing the same name uses that name only to designate him/herself as a person, this would not constitute trademark infringement. In the present case, the appellant was of the opinion that it was against the Swiss Constitution to ignore the regulations on personal names in trademark opposition proceedings. The court, however, held that the legislator had undoubtedly intended to exclude from opposition proceedings arguments that did not fall within the scope of classic trademark law. 

The administrative court held that the relevant public for both marks consisted not only of specialists in insurance, financial, monetary and real estate services, but also of the average consumers. Further, the court found that the services covered by the marks were identical. Turning to the comparison of the marks, the court determined that the dominant elements were the words 'Hofer' and 'Höfer', which:

  • had the same length and the same sequence of vowels ('O'-'E'); and
  • differed only in the German 'Umlaut' on the letter 'O'. 

In the court's view, the figurative element of the opposed mark was not sufficiently characteristic. Therefore, the two marks could lead to confusion in the sense of trademark law.

The decision is in line with an earlier opposition decision of the Administrative Court in MONARI v ANNA MOLINARI (B-6046/2008)) and with the decision of the Swiss Federal Court in GUCCIO GUCCI v PAOLO GUCCI (116 II 614). In both cases, the earlier mark was protected against use of the later registered mark.

Peter Heinrich, Streichenberg Attorneys at Law, Zurich

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