URBINO registration allowed despite being a GI


The Swiss Federal Commission of Appeal for IP Rights has allowed the registration of the mark URBINO for buses in Class 12 of the Nice Classification. The commission found that although Urbino is the name of an Italian city that is known to a majority of the public in Switzerland, (i) most of the relevant public would consider URBINO to be connected to the word 'urban' rather than the city name, and (ii) the mark had already been registered in Italy (Case MA-AA 12/03, June 15 2004).

Busconsult neo GmbH of Germany filed an international application to register URBINO as a mark for buses. Switzerland was among the countries for which protection was sought. When examining the application, the Federal Institute of Intellectual Property (IGE) pointed out that Urbino is the name of an Italian city that has been a UNESCO World Heritage centre since 1998. The IGE refused protection in Switzerland on the following grounds: (i) city names are geographical indications (GIs) that under normal circumstances fall into the public domain and cannot be monopolized, and (ii) the mark URBINO would be deceptive in relation to goods that are not of Italian origin. Busconsult refused to restrict its application to Italian buses and appealed.

The Federal Commission of Appeal for IP Rights reversed. It confirmed that a city name can fall into the public domain and/or be misleading, which would justify refusing registration. It referred to the Swiss Federal Court decision in YUKON (BGE 128 III 454), in which a number of categories of protectable geographical names were identified

One category consists of geographical names that are not known as such in Switzerland. The commission found that the name Urbino, which is known as a cultural centre, would be understood as a GI by a considerable portion of the Swiss public.

Another category consists of GIs that have a clearly recognizable meaning for the relevant consumers. The commission observed that the relevant consumers for the goods claimed in the URBINO application were mostly:

  • technicians;

  • traffic experts; and

  • purchasers of public transport vehicles.

To them, the mark URBINO would be connected to the word 'urban' rather than a GI. Accordingly, the commission saw no risk of deception if the mark were to be used for goods other than Italian buses.

Lastly, the commission considered the question of whether there was a need to keep the name Urbino free for other potential manufacturers of buses in the city of Urbino. The commission noted that the Italian Trademarks Office (TO) had allowed the mark for Italy. It reasoned that if the Italian TO did not find it necessary to keep the name free in Italy, it would not make much sense to keep it free in Switzerland. Accordingly, it reversed the IGE's decision and allowed registration.

David J Meisser and Bettina Bochsler, Meisser & Partners, Klosters

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