VOLTERRA registered for energy services

The Federal Commission of Appeal for IP Rights has allowed the registration of VOLTERRA for services relating to energy generation and distribution (Case AM-AA 09/03).

German company Volterra GmbH applied to register VOLTERRA with the Swiss Federal Institute of Intellectual Property. The institute refused registration on the grounds that the mark was identical to the name of a well-known town in Tuscany, Italy. It reasoned that consumers were likely to associate the mark with the Italian town and would therefore be confused as to the source of the services. Volterra appealed.

The Federal Commission of Appeal for IP Rights upheld the appeal and allowed registration of the VOLTERRA mark. It held that the relevant consumers were purchasers of electrical energy with specialist technical knowledge. The commission held that these consumers would not understand the mark VOLTERRA to be an indication of the geographical origin of the services. Rather, they would see it as an invented term made up of the combination of the words ‘volt’ (a measure of electric tension) and ‘terra’ (meaning earth). They would not associate it with the name of the Italian town, particularly as it is not known for its energy generation and distribution services.

The commission also noted that the mark had been registered as a Community trademark and that as a result even Italian competitors of the trademark owner are prohibited from using the mark in their own country. The commission concluded that, although it was possible that solar or wind power plants could be operated in Volterra, it is not the task of the Swiss authorities and Swiss law to keep a foreign geographical indication free if the relevant country itself has made no effort to do so.

Peter Heinrich, Lenz & Staehelin, Zurich