Region: Switzerland

'Everything and the kitchen sink' approach to trademark filing may lead to invalidation

The Swiss Federal Supreme Court has affirmed a decision of the Commercial Court of Zurich in which the latter had invalidated several YELLO marks on the grounds that the owner had essentially tried to "block" the use of the sign for all goods and services. As this is a common practice among trademark owners, the decision may have far-reaching consequences.

17 April 2012

No monopoly over Oktoberfest beer name

The Swiss Federal Administrative Court has dismissed an appeal by the Verein Münchener Brauerein eV (the Munich Breweries Association) against a decision of the Federal Institute of Intellectual Property in which the latter had refused to register the collective word mark OKTOBERFEST-BIER for beer on the grounds that it lacked distinctiveness and should be kept free for use by third parties.

02 April 2012

Only classic trademark law arguments will be considered in opposition proceedings

The Federal Administrative Court has rejected an appeal against a decision of the Federal Institute of Intellectual Property in which the latter had upheld an opposition by the owner of the earlier registered mark HOFER against the registration of the figurative mark HÖFER FAMILY OFFICE. In doing so, the court rejected the appellant’s argument that it was against the Swiss Constitution to ignore the regulations on personal names in opposition proceedings.

20 March 2012

Only identical or quasi-identical marks can be subject of action for transfer

In a case involving the trademarks GO FAST and GO FAST SPORTS, the Swiss Supreme Court has clarified that only identical or quasi-identical trademarks could be the subject of an action for transfer. It also held that a court can oblige a respondent to make a declaration of intent to transfer a domain name to the holder of the corresponding trademark under the Unfair Competition Act.

21 February 2012

Coca-Cola fails to prevent registration of red and white mark

The Swiss Federal Administrative Court has upheld a decision of the Federal Institute of Intellectual Property in which the latter had dismissed an opposition by The Coca-Cola Company against the registration of a device mark consisting of the words '<i>Caffe Cosi</i>' in white curvy script against a red background on the grounds that it was not similar to the COCA-COLA mark.

08 November 2011

Strict practice regarding shape marks also applies to packaging

The Supreme Court has refused to register a three-dimensional trademark for fish products. The court held that, while consumers may perceive the overall appearance of packaging as an indication of source, this does not mean that they will perceive the packaging as such, without any other signs, as an indication of origin.

19 September 2011

Vodka mark held to be detrimental to famous VIAGRA mark

The Commercial Court of Bern has upheld an action by the producer of the well-known Viagra drug for a declaration of invalidity of the trademark VIAGUARA for vodka. Among other things, the court found that use of the VIAGUARA mark for strong alcoholic beverages conflicted with the serious reputation of the plaintiff's product.

15 September 2011

Court refuses to register "smell of candied almonds"

The Federal Administrative Court has refused to register the "smell of candied almonds" as a trademark for jewellery and watches. The court found that the smell was not sufficiently defined, even though the applicant had provided a detailed recipe specifying the type, quality and quantity of each ingredient and giving step-by-step instructions as to how to prepare candied almonds.

06 September 2011

Nespresso dispute still brewing

In the dispute between Nestlé and Swiss retailer Denner over the sale of capsules compatible with Nestlé's Nespresso machines, the Federal Supreme Court has annulled the decision of the Commercial Court of St Gallen on procedural grounds and sent the case back to it. The Supreme Court rebuked the lower court for having reached a conclusion without the aid of a court-appointed technical expert.

20 July 2011

Mark held to be geographical indication for rum

The Federal Supreme Court has upheld decisions of the Swiss Federal Institute of Intellectual Property and the Federal Administrative Court in which the latter had refused to register the mark ZACAPA for rum. 'Zacapa' is the name of a province of Guatemala, as well as the name of the province's capital.

27 May 2011

Unlock unlimited access to all WTR content