The Federal Supreme Court and the Federal Administrative Court recently handed down conflicting decisions in two ostensibly similar cases concerning disputed family names.

Federal Supreme Court decision

In its decision, the Federal Supreme Court held that the company name Bachman Rechtsanwälte AG is not confusingly similar to the older company name Pachmann Rechtsanwälte AG (the German term 'Rechtsanwalte' translates as 'attorneys at law' and is thus purely descriptive).

The court asserted that the use of family names in company names is permissible even if the family name is used in an older name of a company active in the same industry.

In this case, both companies performed legal services. Lawyers often create firm names by combining the term 'Rechtsanwalte' with a family name to evoke a sense of trust. Therefore, lawyers have a protected interest in using family names when naming their firms. The court assumed that the Swiss public would be able to distinguish between the two names because:

  • the first letter of each name was different; and
  • Bachman is a common family name in Switzerland, while Pachmann is rare.

Federal Administrative Court decision

In a similar case, the Federal Administrative Court held in opposition proceedings that the trademarks MEISTER and ZEITMEISTER, which were both registered in Class 14, were confusingly similar.

At the lower instance, the Institute of Intellectual Property argued that the word 'meister' (ie, master) constitutes a quality or promotional expression and that, therefore, the distinctiveness of the older trademark MEISTER was weak. Based on this finding, the institute held that the additional element 'zeit' (ie, time) was sufficient to enable the public to distinguish between the two trademarks.

However, the Federal Administrative Court reversed the Institute of Intellectual Property's findings on the basis that:

  • the MEISTER trademark had been used extensively for many years and had therefore acquired normal distinctiveness; and
  • for the Swiss public, the word 'meister' constitutes not only a quality or promotional expression, but also a family name.

Based on these arguments, the court concluded that the two trademarks were confusingly similar.

Comment

The main difference between the two disputed family name cases was that the first concerned company names and the second concerned trademarks.

The first case demonstrates that, in principle, a person should be able to use their family name as a company name and that this is especially important for lawyers. However, trademark law contains no such rule. Therefore, in the second case, the Institute of Intellectual Property's conclusion that the two trademarks containing the family name Meister should coexist was not based on the argument that families should be able to use their names. Nonetheless, the Federal Administrative Court reminded the institute that Meister also constitutes a family name.

The second case demonstrates that the Institute of Intellectual Property is reluctant to uphold the protection of quality or promotional expressions in trademarks, both in registration and opposition proceedings.

For further information on this topic please contact Mathis Berger at Nater Dallafior Rechtsanwälte AG by telephone (+41 44 250 45 30) or email (berger@naterdallafior.ch). The Nater Dallafior Rechtsanwälte AG website can be accessed at www.naterdallafior.ch.

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