© The Author (2008). Published by Oxford University Press. All rights reserved
Swiss trade marks practice on misleading geographical indications
Legal context: Geographical references in trade marks are often used not only to refer to a certain territory of origin for certain goods or services, but also to evoke desirable associations, imaginations, emotions, or ideas. The strict practice of the Swiss Trade Marks Office often requires applicants to limit their list of goods and services to certain countries.
Key points: This abstract discusses the issues of geographically suggestive trade marks in Switzerland, the strict test used by the Swiss Trade Marks Office often requiring the applicant to limit the list of goods to a specific country, the new stance the former Appeals Board took in this regard, and how it was struck down by the Swiss Supreme Court, confirming the strict test of the Trade Marks Office. Finally, the article gives a solution on how the issue of geographical references in trade marks should be treated in order to match reality.
Practical significance: It is important to know that the Swiss Trade Marks Office applies a strict test when it comes to geographical references in trade marks. Usually, the applicant is required to limit the list of goods, although it is questionable whether the trade mark really suggests that the goods stem from a certain country. Foreign decisions are not binding for the Swiss Trade Marks Office and in this regard usually disregarded.
Key Words: The Swiss Trade Marks Office follows a strict test concerning trade marks containing geographical indications. • The practice often constrains the applicant in restricting the goods and services. • This practice is not only at odds with other European jurisprudence, but inconsistent with reality. • The author proposes a change of the current practice with a wider acceptance on a case-by-case basis, which was recently brought forward by the Appeals Board, but subsequently rejected by the Supreme Court.
* Attorney at law, LL.M. with Meisser & Partners, Klosters, Switzerland.