Shape of Panton chair is distinctive, says court

The Swiss Federal Administrative Court has held that the shape of the Panton chair could be registered as a trademark (Case B-6050/2007, February 20 2008).
The Panton chair is a world-famous design classic created by Danish designer Verner Panton in 1967. The chair is undoubtedly a work of art under copyright law. 
Panton's heirs filed an application for the registration of the shape of the Panton chair as a trademark for goods in Class 20 of the Nice Classification. The Swiss Federal Institute of Intellectual Property (IGE) rejected the application (Case AM-AA 09/03). On appeal, the Swiss Federal Administrative Court reversed the decision of the IGE.
With regard to the issue of distinctiveness (Article (2)(a) the Trademark Act), the court considered whether the shape of the Panton chair differed from shapes that are "customary or expected by the public" for the relevant goods. The court found that the shape of the Panton chair differed from customary or expected shapes, and was thus distinctive. In addition, the court briefly considered whether the shape of the chair had a purely functional purpose (Article 2(b) of the act), and found that this was not the case. Therefore, the court concluded that the three-dimensional shape of the chair could be registered as a trademark. The decision has now been appealed.
The notion of "shapes that are customary or expected by the public" is not expressly contained in the act, but has been used by the Swiss Federal Court to decide whether the shape of a product falls within the public domain under Article (2)(a) of the act.
It will be interesting to see how the Swiss Federal Court will rule on the case on appeal. Until now, the IGE and the Federal Administrative Court have tried to avoid having to interpret Article 2(b) of the act. In the present case, the interpretation of the notion of 'nature of the goods' is likely to be decisive.
The phrase "the shape which gives substantial value to the goods", which is contained in Article 3(1)(e) of the First Trademarks Directive (89/104/EEC) and Article 7(1)(e) of the Community Trademark Regulation (40/94), is not included in the Swiss Trademark Act. However, in an earlier decision, the Swiss Federal Court seemed to treat aesthetic and functional features in the same way. Such interpretation would allow the inclusion of both aesthetic and functional characteristics in the notion of 'nature of the goods', thus avoiding an (unintended) discrepancy between EU and Swiss law. In Benetton (Case C-371/06, September 20 2007), the European Court of Justice had held that the shape of a product which gives substantial value to that product cannot be registered as a trademark regardless of whether it has acquired distinctiveness through extended use.
Peter Heinrich, Staiger Schwald & Partner AG, Zurich

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