SWISS ARMY marches on to registration
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The Swiss Administrative Court has allowed the registration of the trademark SWISS ARMY (Case B-3553/2007, August 26 2008).
On December 10 2002 the Swiss Federal Department of Defence, Civil Protection and Sport applied for the registration of the word mark SWISS ARMY for various goods and services in Classes 3, 6, 8, 9, 11, 12, 13, 14, 16, 18, 20, 21, 22, 24, 25, 28, 29, 30, 32, 33, 34, 37, 39, 40, 41, 42, 43, 44 and 45 of the Nice Classification.
The Swiss Federal Institute of Intellectual Property (IGE) refused the application on the grounds that the mark was descriptive. Following submissions by the department and a consultative meeting, the IGE allowed the registration of the mark for goods and services in Classes 3, 9, 14, 18, 20, 28, 32, 33, 34, 37, 39 and 44, with the restriction that the goods in Class 34 be limited to goods of Swiss origin. Registration was refused for the remaining goods.
On May 23 2007 the department appealed to the Administrative Court.
The court first considered whether the department was entitled to appeal the decision. The court held that although the department owned the identical trademark SWISS ARMY (Registration P-444683) for goods and services in Classes 3, 6, 8, 9, 11, 12, 13, 14, 16, 18, 20, 21, 22, 24, 25, 28, 29, 34, 37, 39, 40, 41 and 42, it still had an interest in the second SWISS ARMY mark because:
- the goods and services covered by the second SWISS ARMY mark were slightly different from those covered by the first mark; and
- the department could use the second mark for licensing purposes.
According to the court, the examination of the registrability of a mark must take into account only the mark applied for, and not the applicant's whole portfolio of trademarks. However, there must be a clear indication that the applicant intends to use the mark applied for.
In addition, the court reasoned that there was no need to keep the mark free for use by competitors, since it was unlikely that a second Swiss army would ever be created.
The court thus overturned the decision of the IGE and allowed the registration of the trademark SWISS ARMY.
Barbara K Mueller, Meyer Lustenberger, Zurich
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