‘Gap’ will not be perceived as name of French town

Switzerland

The Federal Administrative Court has allowed the registration of the trademark GAP for goods in Class 28 of the Nice Classification (Case B-3458/2010, February 15 2011).

The word 'gap' has several meanings:

  1. in the English language, it means an empty space, a hole; 
  2. it is the name of medium-sized town in the French Alps;
  3. it serves as an abbreviation in several instances; and
  4. it is a well-known trademark for clothing.

The applicant, which produces clothing under the brand Gap, filed an application for the registration of the word mark GAP for toys in Class 28. The Swiss Federal Institute of Intellectual Property, applying Article 2(a) (public domain) and Article 2(c) (misleading character) of the Trademark Act, rejected the application. The institute held that the first meaning of the word 'gap' was of no relevance for clothing, but that the second meaning was an obstacle to the registration of the mark. According to the institute, the French town of Gap is known in at least part of Switzerland, and it was conceivable that toys could be produced in a French town of 40,000 inhabitants.

The applicant appealed. The Federal Administrative Court admitted the appeal and ordered that the mark be registered for the goods at issue.

According to the court, the second meaning of 'gap' (ie, “a town in south-eastern France”) was not the only meaning of the word, and this geographical meaning would not suppress the other meanings in the mind of the relevant public.

This case may be regarded as a landmark case with regard to geographical denominations. For many observers, the approach of the institute and the Swiss courts is very strict. For example, 'Calvi' (a town of 5,000 inhabitants in Corsica) could not be registered as a trademark for metallic goods, even though there is no metal industry in the relevant area (Swiss Federal Court, Case 135 III 416). A geographical name may be registered as a trademark only if there is no likelihood that the goods in question may be perceived as being produced in the area in question - for example, the Federal Court allowed the registration of the trademark YUKON, since there are practically no industries in the Yukon territory of northern Canada (Case 128 III 454). The GAP mark would not pass this test, but the Federal Administrative Court took into account the generic use of the English word 'gap' (ie, an empty space), the widespread use of the letters 'GAP' as an abbreviation and even the existing use of 'Gap' as a trademark.

It remains to be seen whether this decision will enter into force and, if so, whether it shows a change in trend with regard to the registrability of geographical names.

Peter Heinrich, Streichenberg Attorneys at Law, Zurich

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