Region: Switzerland

WIPO expert refuses to recognise well-known status of ELLE mark

A WIPO expert has held that the domain name 'elle-agency.ch' did not infringe Hachette Filipacchi Presse’s trademark ELLE. Although it was established that <i>Elle</i> is a widely-known fashion magazine which sells over six million copies per issue in over 90 countries, the expert refused to recognise its status as a famous trademark in Switzerland.

24 April 2013

'Speed' held to be distinctive for watches

The Swiss Federal Administrative Court has overturned a decision of the Federal Institute of Intellectual Property dismissing an opposition filed by Omega SA, the owner of the trademark SPEEDMASTER, against an application for the registration of the mark SPEEDPILOT for watches. Among other things, the court found that the marks were confusingly similar, especially as they both conveyed the same meaning of 'mastering speed'.

22 April 2013

Federal Administrative Court considers scope of protection of marks containing INN stems

The Federal Administrative Court has found that there was a likelihood of confusion between the trademarks GADOVIST and GADOGITA, which both covered radiocontrast agents. 'Gado-' is a "common stem" according to a WHO document on the use of common stems in the selection of INNs for pharmaceutical substances. However, the court found that it had not been established that 'gado-' was understood descriptively by the relevant public.

18 April 2013

Positional five-stripe mark held to be registrable

The Swiss Administrative Court has confirmed that K-Swiss’ positional five-stripe mark for sports shoes could benefit from trademark protection in Switzerland. Interestingly, the court concluded that the five-stripe mark would be perceived as an indication of origin primarily because consumers were familiar - thanks to other trademark owners such as adidas - with the notion of stripes being indications of origin rather than mere decorations.

10 April 2013

Decision once again demonstrates strictness of Swiss practice

The Swiss Federal Administrative Court has upheld a decision of the Federal Institute of Intellectual Property finding that the trademark NOBLEWOOD lacked distinctiveness for goods in Classes 2, 19 and 27. Although the court noted that the term 'noblewood' was novel, it found that the mark would be understood by the relevant public as meaning 'precious wood'.

05 February 2013

Qatar Airways fails to register its trademark

The Administrative Court has upheld a decision of the Federal Institute of Intellectual Property refusing to register the word mark QATAR AIRWAYS for certain paper goods in Class 16 and services in Class 39. Among other things, the court saw no reason to favour the applicant on the grounds that it was the only national airline, since the latter had failed to prove that it was, actually and legally, the sole national airline of Qatar.

01 February 2013

Size of mark in register irrelevant when assessing likelihood of confusion

The Federal Administrative Court has considered the controversial issue of how, and to what extent, word and/or figurative components determine the overall impression of a trademark that contains both figurative and non-figurative elements. The court decided that the size in which the word element is presented in such a trademark is not relevant when determining the likelihood of confusion with another trademark.

23 January 2013

Combination of 'my' and descriptive elements held to lack distinctiveness

The Swiss Federal Administrative Court has confirmed the refusal to register the trademark MYPHOTOBOOK for bookbinding services in Class 40. Among other things, the court held that the average Swiss consumer of bookbinding services - with a reasonable knowledge of the English language - could easily recognise MYPHOTOBOOK as indicating a book for collecting photos.

15 January 2013

Supreme Court confirms that 'A piece of Switzerland' is not protectable for cheese

The Swiss Supreme Court has upheld a decision of the Federal Administrative Court in which the latter had held that the phrase '<i>Ein Stück Schweiz</i>' ('A piece of Switzerland') was not distinctive or fanciful. Among other things, the Supreme Court noted that there was evidence showing that the phrases 'A piece of Switzerland' or 'A piece of France' were already used in conjunction with cheese by other producers.

29 October 2012

'Savannah' will be understood as reference to vegetation, rather than US town

The Federal Administrative Court has held that SAVANNAH could be registered as a trademark for clothing. It disagreed with the IGE’s finding that the relevant public would understand the mark as referring to the US town of Savannah. Although it criticised a survey submitted by the applicant to show that a majority of the public would understand the mark as referring primarily to a form of vegetation, the court came to the same conclusion based on its own common sense.

26 October 2012

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