Supreme Court reinforces strict practice regarding descriptiveness

In a decision dated February 28 2011 (the reasons of which became available only recently), the Swiss Supreme Court has upheld decisions of the Swiss Federal Institute of Intellectual Property (IGE) and the Federal Administrative Court in which the latter had held that the mark PROLED, as depicted below, was descriptive for lighting products.

The Supreme Court reasoned that the relevant consumers would divide the mark into the elements 'pro' and 'led' and thus understand it as meaning 'professional light emitting diodes', which was descriptive of the products at issue. The graphical elements of the mark (ie, the special script) were too weak to make the mark distinctive. The applicant did not claim that the mark had acquired distinctiveness. 

The decision is arguably wrong: no consumer, when confronted with the mark PROLED, would perceive it as a description of the products bearing the mark. However, it comes as no surprise to those familiar with the Swiss practice concerning absolute grounds for refusal. The Supreme Court has once more sided with the IGE, as it has done in every single case concerning absolute grounds for refusal of word marks since 2002 - the Supreme Court overruled the IGE for the last time in the YUKON case in September 2002.

Mark Schweizer, meyerlustenberger, Zurich

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