PEACH MALLOW is not descriptive of peach-flavoured sweets

The Swiss Federal Administrative Court has allowed the registration of the trademark PEACH MALLOW for goods in Class 30 of the Nice Classification (Case B-5518/2007, April 18 2008). 
Mederer GmbH (established in Fürth, Germany) sought to extend protection to Switzerland of its German registration for the trademark PEACH MALLOW (International Registration 855146) for "bonbons and sweets with peach flavour, partly or completely consisting of foam sugar, fruit gum, jelly (all the aforesaid goods not for medical purposes)".
The Federal Institute of Intellectual Property (IGE) refused to register the trademark on the following grounds:
  • The word 'peach' is a simple English word and the term 'mallow' is directly descriptive of the claimed goods, as 'mallow' is the name of a plant (also called hibiscus or hollyhock). The trademark thus lacked distinctive character.
  • The names of plants must be kept free for use by competitors. 
  • Foreign (German and EU) registrations were irrelevant, since this was a clear-cut case under Swiss law.
On appeal, the Federal Administrative Court disagreed with the findings of the IGE. The court recognized that the word 'peach' is easily understood by the relevant consumers (including children) as a fruit and its flavour. As to the term 'mallow', the court held that:
  •  mallow plants are used primarily for medical purposes; 
  •  mallow plants are not associated with a particular flavour; and  
  • there was no evidence that the plants were being used as ingredients for sweets. 
The court pointed out that the root of mallow plants was traditionally used to produce marshmallows. However, it concluded that:
  • there was no evidence that the relevant public was aware of that fact; and  
  • marshmallows are no longer produced using mallow roots. 
Finally, the court stated that the relevant consumers were not aware of the medical virtues of mallow plants and that the term 'mallow' was not part of the basic English vocabulary. Therefore, the court held that there was no need to keep the mark free for use by competitors and allowed the registration of PEACH MALLLOW.
The decision is in line with the current jurisprudence of the court, under which terms that do not belong to the basic English vocabulary are not considered to be descriptive (for further details please see "DELIGHT AROMAS is not descriptive, says court").
Marco Bundi, Meisser & Partners, Klosters

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