Genuine use of a trademark when used differently than registered (Decision B-3056/2012 of June 4, 2014 of the Swiss Administrative Court – “Artic”)

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ThoCon AG filed the Swiss trademark ARTIC VELVET for inter alia beverages in Nice classes 32 and 33. ILLVA SARONNO SPA filed opposition against this trademark based on an older international figurative trade mark (see below), which is registered in Switzerland for beverages (Nice classes 32 and 33).

Mark as registered (with polar bear element)

The trade mark have been used in Switzerland for spirits (vodka) in a slightly different graphic form (without the graphic element of the polar bear, depicted below).The Federal Institute of Intellectual Property held that the use in the different form did not amount to genuine use of the registered marks and dismissed the opposition.

Sign actually used on products

On appeal the Federal Administrative Court confirmed that the older trade mark had only been used in a significantly different form than registered, leading to the conclusion that the registered mark had not been genuinely used and was unenforceable.

The court considered that the term ARTIC was weakly distinctive for the goods in question. While not identical with the Italian word „artico“, which means “arctic”, the Italian speaking consumers would still associate “ice cold” or the “North Pole” with the term when seeing the term ARTIC in connection with (alcoholic) beverages, and “ice cold” was descriptive for the state beverages such as vodka are best served.

Such understanding in just one language of Switzerland is sufficient to weaken the distinctive character of a trademark. Additionally, German and French speaking customers in Switzerland might understand the allusion. The allusion to “cold” is further supported by the stylized polar bear. At the same time the court holds that the graphical element of the polar bear complements the comparative lack of distinctiveness of the word element, which means that the word element and the graphical element together establish the trademark’s distinctiveness.
Consequently, the court stated that the use of a sign without one of these elements leads to a different overall impression. The owner of the older mark could only demonstrate use of the word element “ARTIC” and hence was not able to prove the trade mark’s genuine use. The owner of the older mark could also demonstrate that on bottles that have been sold in Switzerland, a drawing of a polar bear had been placed next the word element ARTIC. According to the court, this was still insufficient to amount to genuine use of the mark as registered.

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