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Peter Schramm
Guillaume Fournier
The Federal Administrative Court considered in a recent opposition proceeding that the registration of the trademark “ZURICH ECONOMIC FORUM” for the organisation and execution of conferences has to be revoked, due to likelihood of confusion with the earlier trademark “WORLD ECONOMIC FORUM”. The key factor in this assessment, which differed from that of the Institute of Intellectual Property (IPI), was the recognition of a high level of reputation of the earlier trademark. Due to this reputation, the court granted the trademark an extended scope of protection, which also encompasses the originally purely descriptive word element “ECONOMIC FORUM”.
Opposition against the registration of “ZURICH ECONOMIC FORUM”
In March 2016, the trademark “Zurich Economic Forum” (fig.) was published in the Swiss trademark register for various goods and services, including services in class 41, especially for the organisation and execution of conferences. On the basis of its word and figurative mark and its word mark (“WORLD ECONOMIC FORUM”) the foundation bearing the same name (“complainant”) filed two oppositions against the registration and requested that the contested mark be revoked for all the goods and services claimed, with the exception of those in class 25.
The proprietor of the trademark “ZURICH ECONOMIC FORUM” (“respondent”) requested full dismissal in opposition proceedings. In support of its claims, the respondent argued, inter alia, that the word mark “WORLD ECONOMIC FORUM” by the complainant is very weak because it was composed of several elements belonging to the public domain.
IPI affirmed similarity of the trademarks but denied likelihood of confusion
The IPI confirmed the similarity of the opposed trademarks. It stated that the identical element ‘ECONOMIC FORUM’ would lead, not only to a visual and phonetic similarity but also to a similar meaning.. However, according to the IPI the scope of protection of the earlier trademark cannot be extended to the word element “ECONOMIC FORUM” because it belongs to public domain. Therefore, the IPI denied the likelihood of confusion between the two marks.
Affirmation of likelihood of confusion due to the high reputation of the World Economic Forum
In its decision of 30 April 2019 (B-6173/2018) the Federal Administrative Court concluded that the trademarks in question are identical in the element ‘ECONOMIC FORUM’ and in the order the words are used. Furthermore, the trademarks are similar in typeface, sound and meaning. The Court therefore confirmed the assessment of the IPI with regard to the similarity of the signs.
According to case law, there is no likelihood of confusion where the common characteristics of two marks are based solely on elements belonging to the public domain. However, this principle does not apply if the earlier trademark has acquired, due to the duration of its use, the intensity of its advertising or its success, a high degree of reputation, which encompasses the elements in the public domain as well.
Against this background, the Federal Administrative Court further stated that the words ‘ECONOMIC FORUM’, which are contained in all the signs in question, describe the subject-matter or intended purpose of the goods and services claimed. This also applies to the designation “WORLD” and “ZURICH”. Nevertheless, the Court considered that, based on the combination with the graphic elements, the claimant’s combined word and figurative mark must be granted at least a minimal degree of distinctiveness.
With regard to the complainant’s word mark, the Court subsequently held that it had been registered in April 2016 with the note ‘acquired distinctiveness’ for the services ‘organisation and execution of conferences’ in class 41. According to the Court, the acquired distinctiveness of a sign may well have an impact on its scope of protection. However, that scope must be determined in relation to the degree of the acquired distinctiveness or, conversely, the degree of the banality of the sign. The younger such a note in the register is, the more likely it is to be regarded as an indication of the existence of a distinctive character and thus as confirmation of the protection of a trademark. In the Court’s view, the IPI should therefore have taken greater account, in its contested decision of December 2018, of the entry in the register made only 2 ½ years earlier and of the associated assessment of the protectability of the trademark for the ‘organisation and execution of conferences’.
The Court also pointed out that, as a result of the annual event of the “WORLD ECONOMIC FORUM” (short “WEF”), which takes place in Davos in January and is attended by politicians and business representatives from all over the world, and due to the intensive coverage in the media the sign has a high level of reputation. The degree of acquired distinctiveness is therefore to be considered high as well. Consequently, taking into account the fact that the sign is descriptive for the services ‘organisation and execution of conferences’, the trademark must be granted at least a minimum degree of distinctiveness. Since the sign ‘WORLD ECONOMIC FORUM’ is perceived as a trade mark not only by professionals, but, as a result of media coverage, by the general public as well, the scope of protection of the complainant’s trade mark also encompasses the word element ‘ECONOMIC FORUM’, contrary to IPI’s view.
The Court further states that the contested trademark adopts not only the word sequence ‘ECONOMIC FORUM’ from the claimant’s marks, but also their structure, preceded by a geographical indication. It thus evokes the same association, which is that the products bearing the marks in question concern a forum which is concerned with the economy of the whole world, or restricted to a particular place. Against this background, the Court concluded that the existing differences between the trademarks in question are sufficient in order to prevent such a likelihood of confusion with regard to products, for which the trademarks of the claimant only have a small degree of distinctiveness. However, with regard to the organisation and execution of conferences for which the marks have acquired distinctiveness and a high reputation, the differences between the marks at issue are not sufficient to avoid a likelihood of confusion, according to the Federal Administrative Court. The relevant public would recognise these differences, but could assume that the organiser of the well-known “WORLD ECONOMIC FORUM” is holding a business forum focusing on the economic area of Zurich under the trademark “ZURICH ECONOMIC FORUM” or has relocated its venue to the Swiss economic capital of Zurich and would like to refer explicitly to this new venue with the geographical reference “ZURICH”. In this respect, the Federal Administrative Court estimates that there is a danger that the relevant public will assume economic connections behind the signs in question, which in reality do not exist.
Conclusion
On those grounds, the the Federal Administrative Court concluded that there was a likelihood of confusion between the conflicting signs in relation to the services ‘organisation and execution of conferences’. Therefore, in this respect, the decision of the IPI was annulled. Due to the reputation of the claimant’s trademark for these services, the trademark ” ZURICH ECONOMIC FORUM” may not claim any protection for it and the entry in the register must be adjusted accordingly. However, with regard to the other goods and services claimed, the trade mark remains unaffected.
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