On March 21 2014 (BGE140 III 109) the Federal Supreme Court upheld an appeal by the Intellectual Property Institute and overturned the Federal Administrative Court's decision regarding the registration of the figurative trademark EPOSTSELECT.
The mark was claimed for the colours 'postal yellow' and black for goods and services in Classes 9, 38 and 42 – which include programs for electronic data processing devices and machines to engage in money transactions and services including voice and data transmission, rental of computer software and website design. The Federal Supreme Court confirmed the institute's position that EPOSTSELECT lacked inherent distinctiveness.
The institute rejected the application for all goods and services on the grounds that:
- the word element 'ePostSelect' was understood by the reference group as meaning electronic post "carefully chosen from a larger number as being the best or most valuable", or as an indication for a selection of different services in connection with electronic post and thus descriptive or laudatory; and
- the graphic design (including the claimed colour combination) did not satisfy the requirements for registration of a sign based on its inherent distinctiveness.
On appeal, the Federal Administrative Court revoked the institute's ruling and instructed it to register the mark with the colour claim postal yellow and black in respect of goods and services claimed in Classes 9, 38 and 42. The court overturned the institute's decision on the basis that:
- electronic postal services are a contemporary form of traditional postal services for which postal yellow has become customary;
- if postal yellow was used in connection with electronic postal services, the addressees would perceive a link between the electronic and traditional postal services and the electronic postal services would be associated with Swiss Post as the supplier; and
- the sign in postal yellow and black was inherently distinctive in connection with electronic postal services.
On appeal, the Federal Supreme Court held that the Federal Administrative Court had erred in taking into account the fact that consumers would associate existing Swiss Post products with the new EPOSTSELECT mark. It criticised the Federal Administrative Court's failure to distinguish clearly between inherent and acquired distinctiveness ruling as follows:
- The question of whether a mark possesses inherent distinctiveness must be considered in the abstract.
- The mark must be by itself, regardless of its actual use, capable of distinguishing the goods or services of a particular commercial origin from those of other providers. Thus, the Federal Administrative Court must not consider how the reference group perceived postal yellow as a result of its use in commerce.
- If the sign acquired distinctiveness through its use over time, the mark may be accepted for registration based on acquired distinctiveness.
- The question of whether EPOSTSELECT had acquired distinctiveness through use was not a subject of the proceeding, since Swiss Post did not claim acquired distinctiveness and hence provided no evidence for such use.
- The Federal Administrative Court had incorrectly mixed up the principles for assessing inherent and acquired distinctiveness.
- Such an (incorrect) assessment would allow the owner of a trademark with acquired distinctiveness to register any number of inherently non-distinctive signs without providing evidence for the acquired distinctiveness through use.
The Federal Supreme Court takes a strict approach to the difference between inherent and acquired distinctiveness of trademarks. The consequences of this decision are not yet clear. For example, it remains the institute's practice to allow owners of combined trademarks consisting of terms that are in the public domain to claim that one or more of these terms have acquired distinctiveness. It would significantly reduce the options of trademark owners if such partially acquired distinctiveness were no longer available.
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 (firstname.lastname@example.org or email@example.com). The FRORIEP website can be accessed at www.froriep.com.