VUVUZELA is generic for musical instruments, says court

The Federal Administrative Court has affirmed a decision rejecting the application to register the trademark VUVUZELA for musical instruments and playthings on the grounds of lack of distinctive character (June 21 2007, Case B-181/2007).

A vuvuzela is a musical instrument from South Africa; it consists of an air horn of approximately one metre in length, which is made of plastic and is commonly seen at football matches. The name 'vuvuzela' originates either from township slang or from the Zulu language. Vuvuzela GmbH applied for the registration of the word mark VUVUZELA for musical instruments in Class 15 of the Nice Classification, and for games, playthings, and gymnastic and sporting articles in Class 28.

The Swiss Federal Institute of Intellectual Property (IGE) found that the mark was generic for musical instruments and playthings (including toy musical instruments), but could be registered for the claimed goods in Class 28. Vuvuzela GmbH objected that the average Swiss consumer is not aware of the word 'vuvuzela' and cannot be deemed to be familiar with township slang or the Zulu language.

The Federal Administrative Court rejected the appeal brought by Vuvuzela GmbH. It held that the mark VUVUZELA cannot distinguish the musical instruments or playthings of a particular undertaking, since it is a generic term under Article 2(a) of the Trademark Act.

The court examined the issue of whether the IGE could rely on Internet searches to determine whether a term is generic. The court stated that Internet searches could be used to demonstrate that a term is generic, but did not by themselves constitute conclusive evidence.

Although the factual circumstances at the time of application are relevant, the court was of the opinion that the future economic and technical environment should also be taken into consideration. Therefore, the 2010 football world championship, which will take place in South Africa, should be taken into account. Entry in dictionaries or encyclopaedias may often serve as proof that a term is generic, but a term may be considered to be generic if it becomes well known within a short period of time. Accordingly, the court concluded that the designation VUVUZELA should be kept free for common use under Article 2(a) of the act (signs belonging to the public domain).

Interestingly, the Office for Harmonization in the Interior Market has registered the mark VUVUZELA for musical instruments and games, including toy musical instruments. However, decisions from other jurisdictions have no precedential value in Switzerland.

Peter Heinrich, Lenz & Staehelin, Zurich