Registered LERNSTUDIO mark descriptive, rules Supreme Court

The Swiss Supreme Court has dismissed the claim by Lernstudio Zürich AG that a competitor's use of the mark LERNSTUDIO (meaning 'learnstudio') in its trade name constituted trademark infringement.

Lernstudio Zürich, an educational institution created in 1970, has owned since 1994 a Swiss registration for the mark LERNSTUDIO in Classes 41 and 42 of the Nice Classification. It registered the domain name 'lernstudio.ch' in 1996. In 1999 Anton Jungen created a competing educational institution under the trade name Kick Lernstudio für Mathematik Schule für Ergänzungsunterricht. He registered the domain name 'kicklernstudio.ch' in 2000. Lernstudio Zürich brought an action before the Zurich Commercial Court, seeking to prevent Jungen from using LERNSTUDIO in his company's trade name and domain name. The court rejected the claim. Lernstudio Zürich appealed to the Swiss Supreme Court.

The Supreme Court upheld the ruling. It held that the term 'Lernstudio' is descriptive of educational services. It stressed that although the Swiss Federal Institute of Intellectual Property (IGE) had allowed registration of the trademark based on evidence that it had acquired secondary meaning through use, the threshold of proof for secondary meaning is higher in judicial proceedings than in administrative proceedings. It also noted that the burden of proof is on the plaintiff. Lernstudio Zürich, said the court, had failed to meet this higher threshold.

The Supreme Court also dismissed claims of trade name infringement and unfair competition. It found that the lack of distinctiveness of the trade name Lernstudio Zürich precluded any likelihood of confusion between it and even the short version of the name of Jungen's institution (ie, Kick Lernstudio).

Markus R Frick, Walder Wyss & Partners, Zurich