Secondary meaning may arise from intensive use over two days
The Swiss Federal Commission of Appeal for IP Rights has partly overturned a decision of the Federal Institute of Intellectual Property (IGE) that had rejected Swiss International Airlines AG's (SIA) logo mark applications on the grounds that the logo lacked distinctiveness and included geographical indications (GIs). The appeal commission found that the logo had acquired secondary meaning through intensive use over a period of only two days.
Crossair, a Swiss airline, changed its name to SIA on January 31 2002. On February 1 2002 it filed two applications to register a logo comprising the word 'Swiss' in capital letters and the words 'schweiz', 'suisse', 'svizzera' and 'svizra' in lower case to cover goods and services in Classes 12, 16, 25, 28, 35, 36, 37, 39, 41 and 43 of the Nice Classification. One application was for the logo in red and the other without any colour claim.
The IGE refused the applications on the grounds that the words 'schweiz', 'suisse', 'svizzera' and 'svizra' are translations of Swiss or Switzerland into the four Swiss national languages (German, French, Italian and Romansh respectively). It stated that the words were GIs and therefore could not be controlled by a single entity. The IGE also argued that the logo lacked distinctiveness and that the colour red, which is used in the Swiss national flag, only emphasized the logo's descriptive character.
However, such objections can be overcome by providing evidence of extensive and/or long use, usually over 10 years - as long as the word(s) for which registration is sought is/are not terms that are indispensable for trade. Such secondary meaning must have been established at the date of application and continue until the date of registration.
Accordingly, SIA submitted a large amount of material to the Federal Commission of Appeal for IP Rights, including the following:
- the list of attendees at the press conference held on January 31 2002 in Basel to announce the company's new name;
- copies of six Swiss newspapers dated February 1 and 2 2002 in which the new name and logo were mentioned following the press conference;
- a brochure called "A short story about civilized aviation", of which 10,000 copies were printed, about SIA's new name and logo.
- the schedule to repaint SIA's aircrafts since February 2002;
- the numbers of passengers transported on the newly-painted aircrafts until March 2003;
- a short commercial produced especially for Swiss television, which was shown over 290 times from April to June 2002, as well as in Zurich's main train station on an electronic board; and
- proofs of advertisements published in Swiss newspapers from April to June 2002.
The appeal commission accepted that in times of modern, mass communication, very intensive use can create secondary meaning in a very short time. It concluded from the evidence submitted - in particular the exceptional media attention given to the press conference of January 31 2002, the dominant presence of the logo in the press on February 1 and 2 2002 and the particular circumstances of SIA's formation - that the logo enjoyed secondary meaning as of February 1 2002.
However, the commission found that the secondary meaning only applied to airline services, namely passenger and goods transportation in Class 39, and airline catering in Class 43. Accordingly, it accepted registration in Classes 39 and 43 only.
J David Meisser and Bettina Bochsler, Meisser & Partners, Klosters
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