BlackBerry vs. Blackphone: What color is a berry in the digital age?


The Swiss Federal Administrative Court finds that the increased scope of protection of a trademark achieved through use could also extend to an element of said trademark, which is originally in the public domain. Consequently, there may be a likelihood of confusion if a later trademark comes close to the element of the earlier one, which originally belonged to the public domain.

BlackBerry Limited filed an opposition against the following trademark (CH 668 121) registered by SGP Technologies SA for the classes 9, 35, 38 and 42:

blackphone

This opposition was based on the earlier trademark CH 656 003 BLACKBERRY being protected inter alia for the classes 9, 35, 38 and 42.

BlackBerry argued that the opposing trademark is a strong mark because of its reputation. The Swiss Federal Institute of Intellectual Property (IPI) rejected the opposition; it acknowledged that in exceptional cases, similarity in components that are in the public domain might give rise to a likelihood of confusion. For example, due to the duration of use or the intensity of advertising, the mark must have acquired a high degree of public awareness in its entirety and the element in the public domain must participate in this extended protection of the trademark. In the present case, the IPI left open whether the trademark BLACKBERRY is highly distinctive because of its reputation, since in its opinion the information filed by BlackBerry is in any event not capable of showing that the public domain element „BLACK“ in itself participates in the extended scope of protection.

BlackBerry filed a notice of appeal against this decision arguing that the dominant, identical verbal element BLACK“ is at the beginning of the trademark and must therefore be given greater weight. The very high reputation and strength of the opposing mark BLACKBERRY leads to an increased scope of protection of the trademark as a whole, that is to say, it also includes the word element „Black“. The second word element ‚“PHONE“ of the contested trademark directly refers to the category of goods and services for which the opposing mark enjoys a very high reputation (likelihood of association).

In its ruling of 6 December 2018 (Case no. B-720/2017), the Swiss Federal Administrative Court partially reversed the decision of the IPI. It considered that contrary to the view of the IPI, but according to settled case-law, the word element „BLACK“ of the opposing trademark – originally being in the public domain – could take part in the increased scope of protection and the increased reputation takes precedence over any requirement of availability of this element. Therefore, a later trademark using the same element can induce a likelihood of confusion.

When comparing the trademarks, the stylized letter „b“, which precedes the word element „BLACK“ of the contested mark, is also the initial letter of the word element and is thereby of little importance. The trivial descriptive, second element „PHONE“ of the word element of the contested mark draws attention to the same beginning of the mark „BLACK“ and supports the likelihood of association. The initial element „BLACK“ characterizes the BLACKBERRY trademark sufficiently, thanks to the increased scope of protection, to give rise to an indirect likelihood of confusion in relation to the contested mark.

However, BlackBerry was only able to demonstrate that the trademark BLACKBERRY is well known in Switzerland for the goods „mobile phones, smartphones, tablet phones, personal digital assistants (PDAs) and their accessories“ in class 9 and for „instant messaging services“ in class 38, which means that the element „BLACK“ currently has a high degree of distinctiveness only for those goods and services.

As a result, the Swiss Federal Administrative Court reversed the decision of the IPI for all goods in class 9 and for „the provision of e-mail and instant messaging services“ in class 38.

This decision falls in line with the jurisprudence of the Swiss Federal Administrative Court, but revealed once again the different assessment of the IPI and the Swiss Federal Administrative Court, with the IPI being slightly more strict.

Further Information: