No. 26
September 2012
International Association for the Protection of Intellectual Property
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“Austin used in 1833 & ever since” trademark deemed misleading in Switzerland for goods not originating from the United States
Thomas Widmer, LALIVE, Geneva, Switzerland

The US-based “Austin Powder” company sought to register in Switzerland the following trademark in relation with, inter alia, industrial explosives:

This trademark, which had been accepted by the US Patent and Trademark Office (USPTO) as well as by the EU's Office of Harmonization for the Internal Market (OHIM), was rejected by the Court for the following reasons:

First, the Court considered that, as a rule, when a trademark comprises a geographical place, it causes the consumers to believe that the products commercialised under that trademark originate from the country to which it refers. In other words, a geographic place is considered as an indication of source.

Second, when a term can be understood both as a geographical place and as (for instance) a first or family name, it has to be determined which meaning is predominant. If there is no predominant meaning and the term remains equivocal, there exists a risk that consumers will understand the term as an indication of source.

By way of example, the Court considered in a previous decision that “Victoria” referred predominantly to a first or family name, and not to the Canadian city of the same name (Cases B-6562/2008 and B-3381/2010). In another case, “Louis Boston” was also found by the Court to refer predominantly to a first or family name and not to the US city since the first name “Louis” preceded the term “Boston” (Case B-6222/09). Similarly, the device trademark “Phoenix” accompanied by the image of a bird would be considered to refer predominantly to the mythical bird and not to the homonym US city (example given by the Swiss Institute of Intellectual Property).

In the case at hand, the Court held that, in the absence of a clear indication in the trademark at issue that “Austin” referred to a family name and not to the capital of the US State of Texas, there exists a risk that consumers might believe that the industrial explosives originate from the US.

Third, the argument that said industrial explosives are purchased by specialists who are familiar with the “Austin Powder“ company and, thus, are aware that “Austin” refers to a patronymic and not to a geographical place would, in the Court's view, only have been relevant had the trademark at stake been filed as a trademark having acquired a secondary meaning (in French, a “marque imposée”), which was not the case here.

Fourth, the Court held that “Austin” did not fall under the exceptions provided for by Swiss case law according to which a geographical place is not considered as an indication of source if, for instance, it has a purely symbolic character (such as “Etna” [an Italian volcano] for bunsen burners [Case 117 II 321] or “Alaska” for menthol cigarettes [Case 4A.5/94]), or if it refers to a place from which the goods manifestly cannot originate (such as “Mont-Blanc” [the highest mountain in the Alps] for pens [Case MA-AA 09-12/05, in Sic! 2007, 211]).

As regards the latter exception, the Court ruled in casu that it was not inconceivable that the average consumer would assume that industrial explosives originate from Austin, Texas, even though this was unlikely for certain specialists in the field, as there are no significant resources to be mined in the region.

As a consequence of the above, the Court confirmed the Swiss Institute of Intellectual Property's decision that the litigated trademark could only be registered in Switzerland if it was limited to industrial explosives originating from the US – which was not the case.

In this respect, the Court, regrettably, did not explicitly consider the appellant's argument that such a limitation could not be applied as it would be unclear how and under which law the notion of “originating from the US” would be interpreted.

The Court's decision is not final as it can still be appealed to the Swiss Supreme Court.
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