PIRATES OF THE CARIBBEAN defeated on appeal

The Swiss Federal Administrative Court has refused to allow the registration of the trademark PIRATES OF THE CARIBBEAN for goods in Classes 9 and 16 of the Nice Classification (Case B-1759, February 26 2008).

The applicant (which is not named in the decision and is located in California) filed an application for the registration of the word mark PIRATES OF THE CARIBBEAN for recording discs, CDs, DVDs, movies, comics, paper products and printed matter, including newspapers, journals, magazines, calendars and books. The Federal Institute of Intellectual Property (IGE) refused registration on the grounds that:

• the mark has a 'thematic content' when used for the goods at issue and is thus not apt to distinguishing their source; and
  
  
• the mark must be kept free for use by the trade.

On appeal, the Federal Administrative Court upheld the decision of the IGE, except for paper products (products that are not related to any informational content).

The court pointed out that the intrinsic value of the goods at issue originates not from their physical properties, but from the information that they contain (ie, from the recorded works of art). Therefore, the descriptive character of the mark was to be assessed in accordance with the content of the works. Titles or illustrations of audiovisual works are often deemed to be descriptive of the nature of the goods. However, a distinction must be made for titles of printed publications or CDs. According to the court, titles containing the phrase 'pirates of the Caribbean' are descriptive only of books, films or CDs relating to piracy in the Caribbean sea.

However, the court chose not to discuss this issue in detail. Instead, it relied on other grounds to decide the case, holding that it is necessary to determine whether 'content-related' trademarks should be kept free for use. According to the court, most Swiss consumers would understand the meaning of the English phrase 'pirates of the Caribbean'. The court found that the mark PIRATES OF THE CARIBBEAN referred to a historical topic (that was not related to the applicant) and that there was a legitimate interest in keeping the phrase free for use by competitors. In this regard, the court pointed out that nine books and CDs on the theme of Caribbean pirates had recently been published.

The fact that similar trademarks had been registered in Switzerland and other countries was considered to be irrelevant.

Peter Heinrich, Staiger Schwald & Partner Ltd, Zurich