Geographical names can be a great source of inspiration for new trademarks. Well-known trademarks that consist of or have been inspired by geographical names include, for example, “Montblanc” or “Maui Jim”.
However, Switzerland has a rather restrictive approach to the registration of geographical names as trademarks. In a recent case, the Swiss Federal Administrative Court confirmed this restrictive approach. If you intend to register a trademark that contains a geographical name, applying the relevant criteria in our downloadable checklist (see link below) will reduce the risk of a rejection of your trademark application in Switzerland.
Geographical indications and indications of source
Geographical names directly or indirectly indicate a geographical place (“Geographical Indications“). A direct Geographical Indication could be the name of a city (such as Colmar), a state or island (such as Maui). Indirect Geographical Indications are words or signs that create an association to a certain geographical place – for example the name of a mountain (such as Mont Blanc), a park (such as Hyde Park) or a famous historical or allegorical personality (such as Uncle Sam).
If the relevant public (those who will typically consume the goods and/or services protected by a certain trademark) expects a direct or indirect Geographical Indication to designate the geographical origin of the claimed goods or services, such Geographical Indications are considered as direct or indirect indications of source (“Indications of Source“).
Indications of Source may be registered as trademarks in Switzerland. However, they are subject to the following limitations:
Direct Indications of Source are considered to be in the public domain and may not be registered as trademarks unless they are combined with other protectable trademark elements (such as graphic elements) and thereby obtain a distinctive character as a whole.
Indirect Indications of Source are not considered to be in the public domain and may generally be registered as trademarks.
Any trademark with a direct or indirect Indication of Source as one of its elements must not be misleading. Thus, a trademark can only be registered for goods or services for which the actual origin corresponds to the Indication of Source.
Restrictive Swiss case law
In a recent decision, the Swiss Federal Administrative Court confirmed the restrictive approach taken in Switzerland to the registration of geographical names as trademarks (decision B-6503/2014 dated 3 July 2015 – LUXOR). In particular, it confirmed that the relevant public is presumed to consider any direct Geographical Indication as an Indication of Source if such direct Geographical Indication is known to them.
This legal presumption may only be overturned in exceptional cases. According to the so-called Yukon-rule developed by the Swiss Federal Supreme Court, this is the case particularly in the following circumstances:
- The Geographical Indication in question is not known to the relevant public;
- Even though the Geographical Indication is known to the relevant public it is considered a fantasy mark and not an indication of origin;
- The Geographical Indication is clearly not suitable as a production, manufacturing or trading place;
- The Geographical Indication is used to describe a type or series of a product;
- The Geographical Indication has acquired distinctive status through use;
- The Geographical Indication has degenerated into a generic name.
Furthermore, if a Geographical Indication is used in combination with additional elements there may be situations where the relevant public, based on the overall impression, would not assume such combined elements to represent an Indication of Source in connection with the claimed goods and/or services. For example, the Swiss Federal Supreme Court recently held that the trademark “INDIAN MOTORCYCLE” is not to be considered as an Indication of Source for, inter alia, clothes (decision 4A_357/2015 dated 4 December 2015). While India is a direct Geographical Indication known to the relevant public, the court held that the concept of an Indian motorcycle (i.e. a motorcycle from India) does not suggest to consumers that clothes promoted under this trademark originate from India – in particular, because there is no real or plausible connection between an Indian motorcycle and clothes from India.
In light of these restrictive standards in Switzerland regarding the registration of Geographical Indications as trademarks, we have prepared a checklist with practical examples and links, to help you with the relevant criteria to keep in mind for a successful trademark registration in Switzerland.