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

Your contact

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:


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:

Share post

most read


MLL Legal

MLL Legal is one of the leading law firms in Switzerland with offices in Zurich, Geneva, Zug, Lausanne, London and Madrid. We advise our clients in all areas of business law and stand out in particular for our first-class industry expertise in technical-innovative specialist areas, but also in regulated industries.

MLL Meyerlustenberger Lachenal Froriep


Much is still unclear in relation to liability questions around AI tools.

Read our latest post about “Liability during the Lifecycle of an AI Tool” and download our white paper.

Show article.

Our Story

MLL Legal is a leading Swiss law firm with a history that dates back to 1885. The firm has grown both organically and by means of strategic mergers, the latest of which took place on 1st July 2021 between Meyerlustenberger Lachenal and FRORIEP.

The merger establishes MLL Legal, a combined new entity as one of the largest commercial law firms in Switzerland with 150 lawyers in four offices in Switzerland and two offices abroad, in London and Madrid serving clients seeking Swiss law advice.

Our firm has a strong international profile and brings together recognised leadership and expertise in all areas of law affecting commerce today, with a focus on high-tech, innovative and regulated sectors. 

About us


Click here for our latest publications


Read all our legal updates on the impact of COVID-19 for businesses.

COVID-19 Information

Job openings

Looking for a new challenge?

Our talented and ambitious teams are motivated by a common vision to succeed. We value open and straightforward communication accross all levels of the organisation in a supportive working environment.

Job openings

Firm News

Click here for our latest firm news.

Our Team

The regulatory and technological landscape continually require businesses to adapt and evolve.
Our 150+ lawyers are continuously innovating and striving for improvement in everything they do. We embrace new ideas and technologies, combining our wealth of expertise with creative thinking and diligence. With our hands-on approach, we implement viable solutions for the most complex legal challenges.

Our Team.

LexCast – the podcast series by MLL NexGen

Smart legal education on the go. The LexCast hosted by MLL NexGen provides legal insights in a short format that allows listeners to educate themselves on and about legal issues wherever they are and whenever they find the time.

Listen to our podcast series – stay tuned.

MLL Legal on Social Media

Follow us on LinkedIn.