Swiss court rules on interaction between 2D and 3D elements with regard to the overall distinctiveness of a sign

• Swiss Federal Institute of Intellectual Property refused to extend protection of the Nussknackermännchen (nutcracker) trademark to Switzerland
• It claimed the sign belonged to the public domain and was thus excluded from trademark protection
• The Swiss Administration Court overruled this, claiming that 2D and 3D elements render a sign protectable if characteristic impact is proved

The Swiss Administration Court has overruled the Swiss Federal Institute of Intellectual Property’s refusal to extend protection of an international trademark (Nussknackermännchen [nutcracker figurine]) to Switzerland for goods in Class 30 of the Nice Classification (Case B-1061/2017, 7 August 2018).

According to the institute, the sign belonged in the public domain and was therefore excluded from trademark protection. In terms of the variety of shapes of goods in Class 30, it held that the shape and its semi-transparent packaging were commonly used and could not serve as an indication of source. Regarding the 2D elements, the institute stated that there was also a variety of figurative designs of packaging of said goods and it was therefore banal.

The court held that the overall impression of a trademark is decisive. Even though a trademark may contain elements belonging in the public domain, these elements may not necessarily characterise the trademark as a whole (as a combination of all elements). This applies to both 3D trademarks and to trademarks comprising 2D and 3D elements.

3D elements

The court held that standing human-like figures and the transparent contours that made the product visible did not render the trademark distinctive due to the large variety of shapes in the relevant segment. With reference to a decision issued by the Swiss Federal Supreme Court in relation to a position trademark (FSC 4A_363/2016, E333/334 – Rote Damenschuhsohle), the Administration Court admitted that the relevant public may become used to the shapes of goods or packaging as source identifiers as was argued by the appellant. However, familiarity must be demonstrated, which the appellant failed to do.

2D elements

In the case at hand, the court held that the visual representation of the nutcracker figurine (made famous by Tchaikovsky’s ballet) was not exhausted by the product or its packaging. The 2D elements of the figurine were clearly different from the 3D standing human-like figure. Therefore, the trademark consisted of a combination of 2D and 3D elements, which had to be tested according to their respective requirements. In such cases, the requirements for a 3D sign could not be applied to a 2D sign.

In the case of a combination of a 3D element belonging to the public domain with distinctive 2D elements, in which the 2D elements materially affect the general impression of the sign, exclusion from protection due to affiliation to the public domain does not apply. The 2D elements of the nutcracker figurine were distinctive for the claimed goods and thus rendered the sign distinctive as a whole.

The court provided useful guidance on the requirements and interaction between 2D and 3D elements. In cases where a large variety of shapes exist, distinctive 2D elements can render a sign eligible for protection if they have a characteristic impact on the general impression. The possibility that the relevant public recognise the shape of goods or packaging as a source identifier of goods is also important to consider. The measure of familiarity and the level of proof must be further clarified.