Swiss IP Institute fails to prevent registration of 'Swiss' marks

The Hong Kong Registrar of Trademarks has dismissed oppositions against 3 Suisses International's applications to register the marks 3 SUISSES and 3 SUISSES COLLECTION (opposition to trademark application No 301668097 and opposition to trademark application No 301668088, January 13 2014).

3 Suisses, a French mail order company claiming to have a history dating back to 1932, filed applications in Hong Kong to register the marks 3 SUISSES and 3 SUISSES COLLECTION in respect of a wide range of goods and services in Classes 14, 16, 18, 25, 35 and 38 of the Nice Classification.

The applications were opposed by the Swiss Federal Institute of Intellectual Property (FIIP), a governmental agency in charge of all matters concerning intellectual property in Switzerland; FIIP is responsible for drafting legislation in the field of intellectual property in the country and represents Switzerland at the international level in areas concerning intellectual property.

FIIP opposed the applications, contending that the main component of the marks was the word 'Suisse', which was likely to be understood by the public of Hong Kong as meaning 'Swiss' and was not capable of distinguishing the applicant’s goods and services from those of other traders. The signs did not have distinctive character and were descriptive. FIIP further contended that, since the goods and services applied for were identical or similar to the goods and services for which Switzerland is a well-known geographical origin, the use of the opposed marks was likely to mislead the public into believing that the designated goods and services were of Swiss origin or related to Switzerland. Therefore, they should be refused registration:

• on the ground that they would be “contrary to accepted principles of morality”;
• on the ground of passing off; and
• under the principles established in the cases of Swiss Miss ([1997] RPC 219) and Chocosuisse v Cadbury ([1998] RPC 117). 

FIIP further alleged that, "according to the result of a simple poll, the relevant public believed that the opposed mark[s] [were] established by three Swiss men and that the goods were related to Switzerland", so that there was confusion as to the origin of the goods/services amongst the relevant public. FIIP also alleged that the marks had been filed in bad faith.

The applicant filed no evidence, but contended in a counter-statement that it owned several international registrations for the mark 3 SUISSES dating back to 1952, and that it also owned a Swiss trademark registration for 3 SUISSES in Class 16. The applicant pointed out that the French word 'Suisse' does not have a plural form 'Suisses', and said that it had never taken unfair advantage by misrepresenting any of its goods or services as being of Swiss origin.

The Hong Kong Registrar of Trademarks held that, while 'Suisse' could mean 'Switzerland' or 'Swiss', neither 'Suisses' nor '3 Suisses' had any known meaning. The marks as a whole did not designate the geographical origin, or any easily recognisable property, of the goods and services applied for. The marks could function as trademarks, and the argument that the marks were exclusively descriptive of the properties of the goods and services applied for had not been made out.

Further, in contrast to the cases of Swiss Miss and Chocosuisse v Cadbury, in which the opponents filed extensive evidence to show that 'Swiss chocolate' had acquired a distinct reputation as being a chocolate of high quality in the United Kingdom and that the marks would be deceptive or misleading when used for chocolate not of Swiss origin, in the present case FIIP merely alleged that Swiss goods and services enjoy an exceptionally good reputation internationally, and are considered reliable and of very high quality. FIIP did not specify for which of the goods and services at issue Switzerland was a well-known geographical origin, and filed no evidence to show the reputation of Switzerland for any kind of goods or services. As FIIP had failed to establish any protectable goodwill or reputation for Swiss goods and services in general, and as the evidence relating to the “simple poll” fell short of the criteria laid down in Imperial Group plc v Philip Morris Limited ([1984] RPC 293) for it to be of any weight at all, the allegation of passing off also failed.

FIIP’s allegation that the applications to register 3 SUISSES and 3 SUISSES COLLECTION had been filed in bad faith also failed, as FIIP had not pleaded any facts in support of this claim. FIIP’s allegation that the marks should be refused registration for being contrary to principles of morality also failed, as FIIP had not identified which aspect of morality would be undermined by the registration of the marks.

The decisions show that it is not sufficient to rely on a general impression or statement in opposition proceedings - for example, that Swiss goods and services are internationally considered to be of high quality. To establish such a claim, evidence should have been filed to show that Swiss goods and services have acquired a distinct reputation among the public of Hong Kong for the goods and services at issue, such that there was an expectation as to the geographical origin of the goods/services. 

Rebecca Lo, Rebecca Lo & Co, Hong Kong