PARK AVENUE is not descriptive of magazines, says court

The Swiss Administrative Court has reversed a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had refused to register the trademark PARK AVENUE for printed matter on the grounds that it was descriptive (Case B-2642/2008, September 30 2009). 

Gruner + Jahr AG & Co KG, one of Europe's major printing and publishing houses, sought to register the mark PARK AVENUE for, among other things, "printing matter" and "bookbinding material" in Class 16 of the Nice Classification. On March 10 2008 the IGE refused to register the mark on the grounds that it was potentially descriptive of the contents of the publications under Article 2(a) of the Swiss Trademark Act.
The Administrative Court disagreed and rejected the IGE's arguments. The court held that the practice of refusing to register in Class 16 any mark that could potentially describe the contents of books or magazines would render trademark protection for such goods extremely difficult - if not impossible. Rather, trademark protection should be refused only where the mark at issue directly describes the contents of the goods.

In the case at hand, the court held that a certain level of thought and consideration was required on the part of the average consumer in order to establish a link between:

  • New York City's Park Avenue;
  • the luxurious lifestyle of the residents of Park Avenue; and
  • a publication on the lifestyle of the rich and famous.
Therefore, in the court's view, the trademark PARK AVENUE was not descriptive of the goods at issue.

Following this decision, it should now be possible to register trademarks such as LIFECODE or ÉCOLE INTERNATIONALE D’ESTHÉTICIENNES-VISAGISTES (which have been rejected in the past) for magazines in Class 16. Nevertheless, it does not allow the registration of trademarks that clearly describe the contents of the magazines (eg, LA CARDIOLOGIA and NEL MONDO).
Matthias U Studer, Walder Wyss & Partners Ltd, Zurich

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