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Stefan Schröter
The Swiss Federal Institute for Intellectual Property (FIIP) refused the trademark WILSON that was filed on December 10, 2010 claiming protection for tobacco products in class 34. The FIIP qualified the mark as part of the public domain. Also, the FIIP held that the mark was confusing the relevant consumer because they could be misled about the geographical origin of tobacco products labelled by the mark WILSON. This holding was based upon the fact that the city of Wilson (50’000 inhabitants) being the capital of Wilson County in North Carolina, USA is situated an area where tobacco is grown.
The applicant filed submission with the FIIP claiming that the mark would rather be perceived by the relevant consumer as a family name than as a geographical indication for tobacco products. The applicant further claimed equal treatment with the trademark WINSTON, which was accepted by the FIIP claiming protection for cigarettes that neither originate from the city of Winston, North Carolina, USA.
With decision of November 21, 2011 the FIIP finally refused the application claiming that the relevant consumer would understand the mark as geographical indication to the city of Wilson as an important US-production area of tobacco.
The applicant filed appealed with the Swiss Administrative Court. With its decision of November 16, 2012 (decision B-6831/2011) the court confirmed the appeal and allowed the mark for registration.
Thereafter the FIIP appealed the decision of the Swiss Administrative Court before the Swiss Federal Supreme Court as the final instance. With its judgement of April 16, 2013 (decision 4A_6/2013) the Swiss Federal Supreme Court confirmed the decision of the Swiss Administrative Court and finally confirmed that the trademark WILSON is eligible for protection even though the claimed tobacco products are not originating from the city of Wilson.
The court stated as a question of law that the relevant public in Switzerland does not know the city of Wilson in North Carolina, USA. In particular the average consumer of tobacco products would not recognize Wilson as an American production area of tobacco. Even if profound tobacco experts are aware of the city of Wilson this could not apply for common tobacco specialists like tobacco sellers and distributors as part of the relevant public in this case. Further, the court denied the mark being part of the public domain because of an US-trademark registration containing the term “Wilson”. This registration led the court to the conclusion that Wilson is not even assumed as a geographical indication within the USA and that there is no realistic need of potential tobacco producers in the city of Wilson to use the city’s name to promote tobacco products.
The decision of the Swiss Federal Supreme Court is noteworthy because it limits the FIIP’s tendency to assume absolute grounds of refusal for any trademark that has a geographical meaning even in places that have no relevance in Switzerland.
