'Speed' held to be distinctive for watches
The Swiss Federal Administrative Court has overturned a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had dismissed an opposition filed by Omega SA, based on its trademark SPEEDMASTER, against Epoch Stockholm AB's application for the registration of the trademark SPEEDPILOT for watches in Class 14 of the Nice Classification (Case B-3371/2012, March 5 2013).
Omega, the owner of the Swiss trademark SPEEDMASTER (No 2P-287422) in Classes 9 and 14, filed an opposition against the extension of protection to Switzerland of the international trademark SPEEDPILOT (No 1065009) in Class 14.
On May 23 2012 the IGE dismissed the opposition. Although the goods in question were identical, the trademarks coincided only in the first part ('speed'), while the second part ('pilot'/'master') was completely different. The IGE considered that the second element of the mark on which the opposition was based ('master') was weak and not protectable per se, while 'pilot' would clearly be understood as meaning an aviator. Since 'speed' was weak with regard to watches, there was no likelihood of confusion and the opposition was dismissed.
Omega appealed the decision on June 22 2012. Contrary to the IGE, the Federal Administrative Court stated that 'speed' had a normal scope of protection and was not descriptive for watches. Even if some watches may contain a tachometer (for measuring speed), the connection between the English word 'speed' and this particular function would not be evident. Conceptually, the trademark would be understood as “mastering speed”. Therefore, the mark SPEEDMASTER as a whole had a normal scope of protection.
Further, the court held that the mark SPEEDMASTER had achieved a high level of notoriety through intense use over decades, especially since American cosmonauts wore Speedmaster watches on the moon expeditions. The court went on to state that the trademarks SPEEDMASTER and SPEEDPILOT were confusingly similar, especially as both marks conveyed the same meaning of 'mastering speed' (“a master of speed” and “a pilot mastering speed”, respectively). The appeal was upheld and the opposition was allowed; the international trademark was thus refused protection for the territory of Switzerland.
The decision of the Administrative Court shows that a trademark always needs to be considered in relation with the specific goods/services covered by the registration in order to assess its scope of protection. While 'speed' may be completely descriptive for certain goods, such as cars (see the decision of the former Federal Board of Appeal for Intellectual Property regarding the trademark ECO-SPEEDSTER for cars (Decision MA-AA 12/96, August 20 1997)), for other goods, such as watches, it may have a normal scope of protection.
The decision of the Administrative Court is final.
Marco Bundi, Meisser & Partners AG, Klosters
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