Wine City name not protectable as a trademark

The Cantonal Court of Valais, acting as first instance in trademark matters, has rejected a petition for a preliminary injunction against use of the names Wine City, Wine City AG (as a company name) and 'winecity-zh.ch' (as a domain name) brought by a wine merchant in the canton of Valais which owns the trademark registration WINE CITY.CH (and device) registered for wine and services in connection with marketing wine (Classes 33 and 42 of the Nice Classification).

The defendant was using the names Wine City and Wine City AG, as well as the domain name 'winecity-zh.ch', for a wine business in a different part of Switzerland.

According to the Cantonal Court of Valais, the words 'Wine City' were descriptive of the goods and services claimed. The fact that the plaintiff had successfully registered its WINE CITY.CH (and device) mark did not necessarily lead to the consequence that the words 'Wine City' as such could be registered as a trademark. Thus, the defendant's use of the names Wine City, Wine City AG and 'winecity-zh.ch' without the figurative element did not infringe the trademark rights of the plaintiff.

The court added that the result would be the same under the Swiss Unfair Competition Act. Although acts likely to cause confusion with the business of competitors fall within the notion of 'unfair competition' in the sense of Article 3(d) of the act, this does not apply to denominations belonging to the public domain.

The court's decision in this summary procedure action is rather restrictive in comparison with some other rulings as to the possibility of obtaining protection for generic denominations. According to some other decisions, including from the Swiss Federal Supreme Court, marks such as LIQUID GOLD for alcoholic beverages, CAMPUS for banking services for students or BANQUET for food were treated as protectable.

Peter Heinrich, Lenz & Staehelin, Zürich