In a recent judgement, the Swiss Federal Administrative Court once again underlines its strict position with regard to the registration of shape marks. The court ruled that a three-dimensional mark consisting of the graphical background of a popular chocolate bar’s packaging cannot be entered in the trade mark register since the “banal” design is not understood as indication of origin, but rather as an indication of a possible ingredient of the goods packaged.

After the Swiss Federal Institute of Intellectual Property (IPI) had already refused to extend the international registration IR 1169244 „fig.“ (emballage) to Switzerland because the claimed three-dimensional trade mark was considered banal and part of the public domain, the trademark holder’s appeal to the Swiss Federal Administrative Court was also without success.

In its decision of 28 March 2018 (Case no. B-1722/2016), the court concludes that the claimed trade mark merely represented the packaging of the claimed goods (inter alia chocolate products, pastries and ice-cream) which did not differ significantly from the packaging designs usually found in the product segment concerned.

In Switzerland, a three-dimensional trade mark may consist of the shape of a product or its packaging or a three-dimensional sign that is independent of the shape of the product and packaging, and which may, for example, be featured on the product. In this regard, the Federal Administrative Court states that three-dimensional signs which are merely a representation of the types of goods covered by the mark at issue or their packaging, without any unusual visual perspective, stylized representation or other special presentation individualizing them in a distinctive manner, are subject to the same conditions as shape marks which represent the form of the goods offered or packaging itself.

The court further states that customers generally consider the form of goods or packaging to be the design of the goods or packaging itself and not a brand. To be perceived by the relevant public as an indication of commercial origin of the goods in question, the form must go beyond functional or aesthetic aspects of the product form shown. Forms that the relevant public expects because of the function or aesthetic appeal of the product do not achieve the required distinctiveness. In short, it is not enough that the form or packaging only has features that distinguish it from other products. Without graphic or verbal elements, average consumers usually do not directly deduce the commercial origin of the goods from the shape of the packaging alone.

With regard to the actual packaging, the Court notes that the disputed shape and color design – rectangular shape, multi-colored packaging film, serrated lateral finishes – is for the most part identical to the usual combination of shapes and colors of the goods claimed and is therefore not understood as an indication of commercial origin.

Due to this “banal” form of packaging, the distinctive character of the sign depends to a large extent on the distinctive character of the graphical elements. Although in the present case, as the complainant alleges, consumers see a snow-covered chain of hills in front of a blue sky, they may also understand the white, undulating surface merely as a descriptive reference to the milk contained in the product. Although the graphic design can serve to distinguish the goods from other products in the goods segment, the present design is not understood in terms of a trademark in the sense of an indication of origin, but rather as an indication of a possible ingredient of the goods packaged.

Furthermore, the court clarifies that illustrations in the form of classic figurative marks, irrespective of their actual use as packaging background in sales, do not qualify as pre-registration of packaging and must therefore be disregarded as reference marks.

This ruling is in line with strict the practice in the registration of shape marks. Although packaging is in principle not excluded from trademark protection, for a large proportion of product packaging the Swiss authorities tend to deny the required distinctiveness. Both the Federal Administrative Court and the Federal Supreme Court have confirmed the restrictive practice of the IPI in the past (see MLL News of 13 February 2018 and MLL News of 14 September 2011). The Registration of a packaging as a shape mark is therefore likely to continue to be confronted with major hurdles in the future.