Supreme Court provides guidance on inherent versus acquired distinctiveness

The Federal Supreme Court has upheld an appeal by the Swiss Federal Institute of Intellectual Property (IGE) against a decision of the Federal Administrative Court in a case involving the mark EPOSTSELECT.

The Swiss Post filed an application for the registration of the combined word and device mark EPOSTSELECT, including claims for the colour “black, yellow”, as shown below, for goods and services in Classes 9, 38 and 42 of the Nice Classification:

The application was rejected by the IGE on the ground that it was descriptive.

On appeal, the Swiss Administrative Court granted trademark protection, after the colour claims were amended with RAL and Pantone specifications (ie, RAL 1004 and Pantone 116 C/109U), and on the ground that the association with a specific vendor of existing products resulted in sufficient distinctiveness.

Upon appeal by the IGE, the Supreme Court overturned the lower court’s decision and confirmed the IGE’s position that the EPOSTSELECT mark lacked inherent distinctiveness, since it would be understood in a descriptive sense as meaning “selected electronic mail”. None of the graphical elements resulted in inherent distinctiveness - that is, the simple yellow background, the common font, the combined words without spaces, the letters in bold, the upper or lower case and even the RAL/Pantone specifications were not sufficient.

The Supreme Court held that the lower court had confused the concepts of 'inherent distinctiveness' and 'derivative distinctiveness', the latter meaning acquired distinctiveness through use. The lower court had erred in taking into account the fact that consumers would associate existing products of the Swiss Post and the new EPOSTSELECT mark. The Swiss Post had not claimed acquired distinctiveness through use of its new EPOSTSELECT mark. Hence, the lower court was not permitted to take the actual perception of the colour yellow in the Swiss marketplace into account when assessing the distinctive character of the EPOSTSELECT mark. Otherwise, the owner of a trademark with acquired distinctiveness could claim trademark protection for additional (and not inherently distinctive) signs without having to prove acquired distinctiveness through use for the new signs.

This leading decision of the Supreme Court provides useful guidance on the difference between acquired and inherent distinctiveness. However, it is still possible to file new marks based on existing trademarks which have acquired distinctiveness through use if such acquired distinctiveness reaches far enough. For instance, it is still possible to file new trademarks with the element 'Zurich' (which is a trademark with acquired distinctiveness/secondary meaning), such as ZURICH INSURANCE EUROPE.

Markus Frick and Nicola Staub, Walder Wyss Ltd, Zurich