Relaxed requirements for registration of three-dimensional trademarks

The Swiss Institute of Intellectual Property (IGE) has announced that it has changed its examination practice with regard to three-dimensional trademarks as of December 1 2007. According to the new practice, it will be possible to register common (ie, non-distinctive) three-dimensional packaging or shapes combined with distinctive elements under certain circumstances.

Under the former guidelines, the IGE consistently rejected trademark applications for non-distinctive shapes or packaging combined with distinctive two-dimensional elements, unless the two-dimensional element embraced the shape as a whole (eg, the three-dimensional trademark for Mars bottles (Registration 456258)).

According to the new practice, the following changes have been in effect as of December 1 2007 and also apply to all pending applications:

• Packaging and shapes that are commonplace but bear distinctive two-dimensional elements (eg, words or designs) are registrable if the two-dimensional element is dominant and affects the overall impression of the mark. Therefore, the two-dimensional element must be clearly visible.
  
  
• The two-dimensional element must be taken into account when assessing the overall impression of the three-dimensional mark under Article 2(b) of the Trademarks Act (absolute grounds of exclusion).

The change in practice was prompted by recent case law of the Administrative Court. In the SILK CUT Case, the IGE refused to register the shape of a cigarette packet bearing the words 'silk cut'. The Administrative Court overturned the decision of the IGE, holding that a three-dimensional mark consisting of a distinctive two-dimensional element and a non-distinctive shape was registrable (Case B-7400/2006, June 5 2007). The court came to the same conclusion in a later case concerning a cream pot bearing the words 'la prairie SWITZERLAND' (Case B-564/2007, October 17 2007).

Therefore, the practice of the IGE is now in line with that of the Administrative Court. Moreover, this change in practice has brought legal certainty to the registration of three-dimensional trademarks. Arguably, the shape of a box bearing the word 'voldoc', which has traditionally been used as an example of the type of three-dimensional mark that should be refused protection, may now in fact be registrable.

Marco Bundi, Meisser & Partners, Klosters