Registrar brushes off Colgate's toothpaste shape mark registration

Switzerland

The Federal Commission of Appeal for Intellectual Property Rights has upheld a decision by the Swiss Federal Institute of Intellectual Property (FIIP) to reject the registration of the shapes of slugs of toothpaste covered with coloured bubbles as three-dimensional marks (Case MA-AA 12-15/02).

In 1998 Colgate-Palmolive Company filed four trademark applications showing three-dimensional slugs of toothpaste covered with coloured bubbles. The FIIP rejected the applications on the grounds that the marks lacked distinctiveness.

On appeal, the Federal Commission upheld the FIIP decision. It found that:

  • Colgate's three-dimensional marks represented the common shape of toothpaste that had been squeezed out of a tube;

  • the fact that the applications covered dental care products in general and not just toothpaste was irrelevant as descriptiveness in relation to specific goods (eg, toothpaste) also results in a finding of descriptiveness in relation to that class of goods on a general level (eg, dental care products); and

  • the colours did not add any distinctiveness as (i) coloured toothpaste is common on the Swiss market, and (ii) Swiss consumers would assume that the colours were an indication of the toothpaste's ingredients or active substances.

However, non-distinctive shapes may be registered as trademarks if additional elements are distinctive. Thus, Colgate obtained protection for two similar three-dimensional marks in which the bubbles were replaced by stars. This seems to suggest that the stars were distinctive elements.

J David Meisser and Bettina Bochsler, Meisser & Partners, Klosters

Get unlimited access to all WTR content