In a recent decision the Federal Administrative Court refused an appeal by Parfums Christian Dior against the Swiss Intellectual Property Institute's rejection of an application for registration of the international figurative trademark DIOR CANNAGE PATTERN for goods in International Classes 3, 20 and 21, which includes soaps, perfumes, cosmetics, skincare products, furniture, mirrors and accessories for cosmetic purposes. The institute had rejected the application on the grounds that the pattern lacked distinctive character.

 


?In its appeal, Parfums Christian Dior argued against the institute's decision on the basis that:

  • the trademark was an unusual combination of basic geometric shapes and thus the presumption of a lack of distinctiveness was wrong; and
  • in a 1997 decision on a request for preliminary measures a Berne court held that a practically identical pattern on a Dior handbag was sufficiently distinctive from the individual geometric forms of which it was comprised that it was not required to be kept for the public domain. Accordingly, the institute's decision on the mark in question was a violation of the principle of equality before the law.

On appeal, the court (February 17 2014) confirmed the institute's decision and rejected the registration of the DIOR CANNAGE PATTERN for the relevant goods.

The court held that patterns belong to the public domain if:

  • similar patterns are common in the segment of the goods and services in respect of which registration is sought; and
  • the pattern claimed does not stand out from those other patterns due to its originality.

The court then considered the graphic design of the surface pattern, which was originally developed for a wooden chair known as Thonet Model 14, which is thought to have seated more people than any other chair in history and is very popular in Switzerland as a simultaneously decorative and functional element (known as Viennese cane). It further noted that grid-like structures are widely applied in the relevant segment of goods and services. Finally, the court stated that despite the absence of identical patterns used in connection with similar goods and services, the DIOR CANNAGE PATTERN was a mere combination of ordinary geometric forms which could not fulfil the purpose of indicating the commercial origin of the relevant goods and hence lacked inherent distinctiveness in connection therewith.

The court also rejected Parfums Christian Dior's argument of violation of the principle of equality before the law, stating that:

  • there is no right to equal treatment with oneself;
  • the goods for which the marks were registered were different, so the two decisions could not be compared; and
  • an earlier mark on which a claim to equal treatment is based must be registered no more than eight years before the later mark, since the case law concerning the get-up of goods is constantly developing.

The court's decision confirms the requirements for assessing the distinctive character of a surface pattern trademark developed by the court in the past. It also confirms that a restrictive interpretation of the principle of equal rights in trademark law is settled case law. The decision may be surprising for fashionistas, but less so for trademark lawyers.

For further information on this topic please contact Christoph Caprez or Roger Staub at FRORIEP by telephone (+41 44 386 6000), fax (+41 44 383 6050) or email (ccaprez@froriep.ch or rstaub@froriep.ch). The FRORIEP website can be accessed at www.froriep.com.