TEGOPORT held to be deceptive if goods do not come from Switzerland

The Swiss Federal Administrative Court has dismissed an appeal against a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to allow the registration of Tegometall International AG's trademark TEGOPORT for various goods in Classes 6, 19 and 20 of the Nice Classification in Switzerland on the ground that the mark could be deceptive for consumers, as they would expect the products to originate from the municipality of Port in Switzerland (Case B-1646/2013, November 5 2014).

Tegometall is specialised in the manufacture of shelves as construction kits. It sought protection for the trademark TEGOPORT for various products in Classes 6, 19 and 20, mainly partitions and shelves-related goods. The IGE refused protection, arguing that the trademark contained the name of a municipality in the Canton of Bern. Therefore, the mark would be understood as a geographical indication and the goods would have to be limited to those originating from Switzerland.

Tegometall appealed the decision. It argued that the trademark would not be divided into two parts, but would be understood as one coined sign. Furthermore, the Swiss municipality of Port, which has merely 3,000 inhabitants, would not be known by the relevant trade circles. In addition, other trademarks with the term 'Port' had been allowed for registration, so the trademark TEGOPORT should be allowed based on the principle of equal treatment.

The Administrative Court disagreed and dismissed the appeal. The court also divided the trademark into the two elements 'Tego' and 'Port'. While it was clear that 'Tego' had no specific meaning, 'Port' could be understood as referring not only to the municipality of Port, but also, based on the English word 'port', to a harbour, portal or even interface. While these definitions based on the English word would not have any meaning with regard to the goods claimed, it was more likely that those relevant consumers who knew the municipality of Port would link the mark to that place.

However, the main question - ie, whether consumers even knew the municipality of Port - still needed to be answered. The court pointed out that the name of small locations could be registrable if those locations known only by a very small part of the relevant consumers (eg, Solis, Carrera, Gimel and Claro). However, in contrast to these locations, the municipality of Port lies in a rather densely populated region. Further, it is directly adjacent to the well-known city of Bienne. Therefore, it should be assumed that it has benefited from a certain amount of publicity. In addition, Port has an industrial and trade district. Therefore, it could not be excluded that persons knowing Port would think that the goods could be manufactured in Port.

Finally, the court did not follow the argument regarding equal treatment. Although the court agreed that the goods covered by the trademark BSL-PORT should have been limited as well, a single case was not sufficient to invoke this principle.

Even though the court itself cited decisions involving the name of small villages or regions that could be registered as trademarks, the very small municipality of Port could not. This also applies to foreign regions, villages or municipalities. As long as they are not known and that there is no need to keep them free for use by third parties, they are registrable. However, while the English meaning of 'Port' as harbour could be regarded as dominant, the court followed a very strict approach in this regard.

Finally, it is interesting to note that the court pointed out that there is an industrial district in the municipality of Port. According to the argument of the court, it is difficult to understand how, in this case, consumers would not be deceived if the goods originated from Zurich, for example. However, it is clear and constant practice (with few exceptions) that limitation to a country is sufficient.

Marco Bundi, Meisser & Partners AG, Klosters