Supreme Court confirms that 'A piece of Switzerland' is not protectable for cheese

The Swiss Supreme Court has upheld a decision of the Federal Administrative Court in which the latter had held that the phrase 'Ein Stück Schweiz' ('A piece of Switzerland') was not distinctive or fanciful (Decision 4A_343/2012, September 19 2012).

Swiss cheese producer Emmentaler Switzerland sought protection for its tagline 'Ein Stück Schweiz' for Emmentaler cheese. On May 7 2012 the Federal Administrative Court refused to register the mark for cheese, as it was mainly laudatory and was not distinctive. Further, the court held that the trademark had not acquired secondary meaning, as the evidence provided by the appellant was not sufficient.

Emmentaler Switzerland appealed to the Supreme Court, but the court dismissed the appeal.

First, the Supreme Court confirmed that the mark, which consists of the terms 'a piece' ('ein Stück') and the name of the country, was similar to the general and common term 'a piece of home(land)'. As such, there was evidence showing that the phrases 'A piece of Switzerland' or 'A piece of France' were already used in conjunction with cheese by other producers. Therefore, the court held that the relevant consumers would understand the phrase as being merely laudatory.

In addition, since the phrase was not fanciful, it would not remain in the memory of the consumers, and, as it belonged to the common language, it had to be kept free for use by others. The issue of whether the mark had acquired secondary meaning was not brought forward by the appellant before the court and, therefore, it was not addressed on appeal.

Slogans are generally considered not to be distinctive and fanciful if they are understood as being merely laudatory in connection with the products/services in question. In the case at hand, in order to obtain at least some degree of protection, Emmentaler Switzerland also applied for registration of a figurative trademark containing the elements 'Emmentaler' and 'Ein Stück Schweiz'.

However, it is important to note that slogans will be refused only if they are understood as being laudatory for every single good/service claimed. For example, the Administrative Court has allowed the registration of the international trademark WE CARE ABOUT YOUR EYECARE (International Registration 982661) by Omega Optix sro for the “treatment of materials” and “financial services”, but refused it for “optical goods” and “medical services” (Decision B-8557/2010, March 19 2012).

Marco Bundi, Meisser & Partners AG, Klosters