Trademark consisting of combination of two descriptive elements given narrow scope of protection

Switzerland

The Swiss Federal Administrative Court has reversed a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had admitted the opposition filed by the owner of the earlier registered trademark MAMABEL against the registration of the mark MAMARELLA for similar goods (Case B-6822/2013, October 2 2015).

The owner of the earlier mark MAMABEL, on which the opposition was based, had registered the mark for a number of goods in Classes 10 und 25 of the Nice Classification, including bras. The later trademark MAMARELLA covered clothing, including nursing bras, in Class 25. The IGE, as first instance, admitted the opposition. On appeal by the owner of the MAMARELLA mark, the Federal Administrative Court reversed and rejected the opposition.

In the opposition procedure before the IGE, the owner of the earlier trademark MAMABEL demonstrated that the mark had been used with respect to nursing bras for decades.

The Federal Administrative Court held that the goods claimed by the two marks were similar, especially as goods for babies and nursing bras are sometimes bought in the same shops.

As to the difference between the two trademarks, the administrative court took the view that MAMABEL and MAMARELLA are of a similar length (three v four syllables) and the sequence of vowels was almost the same (A-A-E v A-A-E-A). The same was true of the sequence of consonants (M-M-B-L v M-M-R-L-L). This was enhanced by the identical beginning of the two marks ('mama').

However, the court found that the meaning of the common part of the two marks ('mama') is universally understood as meaning 'mother', be it in German, French, Italian or Rhaeto-Romanic. As to the end syllable 'bel' in the MAMABEL mark, it could be interpreted without any difficulty as meaning 'beautiful', even if the adjective was not in its usual position. In sum, the two marks presented similar linguistic characteristics.

Finally, according to the Federal Administrative Court, it was decisive that the earlier mark MAMABEL had only a weak distinctive character due to its descriptive quality. As to the degree of attention of consumers, the court deemed that nursing bras are not everyday consumption goods and that, therefore, the degree of attention was slightly higher than usual.

This seems to be a borderline case, as the IGE and the Federal Administrative Court came to opposite conclusions.

Peter Heinrich, Streichenberg Attorneys at Law, Zurich

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