SWISS ARMY defeats bad-faith application

The Intellectual Property Office (IPO) of the Philippines has upheld an opposition filed by Swiss Army Brand Ltd against an application to register the mark SWISS ARMY DHC (and device) by a Swiss company (Case 14-2006-00150, June 14 2007).

Swiss Army Brand Ltd (SAB), a corporation organized under the laws of Delaware, United States, opposed the application for registration of the device mark SWISS ARMY DHC (and device) in Class 14 of the Nice Classification in the name of DH & Co SA (DHC) of Switzerland on the basis of its registrations for the mark SWISS ARMY in Classes 9 and 14.

SAB started using the mark SWISS ARMY mark as early as 1987 and in 1996 the government of Switzerland granted to it a perpetual exclusive right to use the mark SWISS ARMY worldwide - including the right to authorize others to use the mark and to take action against infringing users. SAB obtained registration in the Philippines in 1993. The mark is also registered in its name in eight other countries worldwide.

The IPO upheld SAB's argument that DHC cannot be considered a prior user in good faith of the SWISS ARMY mark in the Philippines or elsewhere since DHC must have been aware of SAB's use of the mark when it filed its application in 1998. The IPO also recognized that SAB's use of Swiss Army as its trade name is equally protected under Article 8 of the Paris Convention for the Protection of Industrial Property, which provides as follows:

"A trade name shall be protected in all the countries of the union without the obligation of filing a registration whether or not it forms part of a trademark."

The IPO also found the junior mark to be confusingly similar to SAB's SWISS ARMY mark since the words 'SWISS ARMY' dominate both marks.

The IPO concluded that DHC's use of the mark SWISS ARMY for goods in Class 14 was likely to mislead the public into thinking that its goods are affiliated with SAB. Accordingly, it upheld SAB's opposition.

Vicente B Amador, Sycip Salazar Hernandez & Gatmaitan, Manila