TV channel mark finds some favour with Supreme Court

The Swiss Supreme Court has reversed in part the Federal Institute of Intellectual Property's (IGE) decision to refuse registration of broadcaster Discovery Communications Inc's word mark DISCOVERY TRAVEL & ADVENTURE CHANNEL for various goods and services (Case 4A.5/2003).

Discovery Communications applied to register the mark with the IGE for:

• recorded magnetic tape and other audiovisual data carriers in Class 9 of the Nice Classification;
  
  
• the broadcasting and transmitting of radio and television programmes in Class 38;
  
  
• radio and television broadcasts in Class 41; and
  
  
• services relating to the coding and decoding of data in Class 42.

The IGE refused registration on the grounds that the mark was descriptive for all the goods and services set out in the application. Discovery Communications appealed and the case made its way to the Supreme Court.

The Supreme Court reversed the IGE's decision in part. It allowed registration for goods in Class 9 and services in Classes 38 and 42. With regard to Class 38, it held that the services referred to "technical transmission services" rather than the actual content of the broadcasted programmes. These services were rendered independently of the content of the transmitted data. Thus, where the mark was used in conjunction with such services, it would not characterize the content of the transmitted data. However, the court upheld the IGE's finding in relation to services in Class 41, stating that the mark was clearly descriptive of radio and television broadcasts within the meaning of that class.

Peter Heinrich, Lenz & Staehelin, Zurich