EU court finds ‘Swissgear’ TM descriptive
The EU General Court has confirmed that the trademark ‘Swissgear’ is descriptive and therefore invalid.
The EU General Court, First Chamber, delivered judgment today, January 23. Wenger, a manufacturer of knives, watches and cutlery, had appealed against a 2016 decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO).
Wenger applied to register the word mark ‘Swissgear’ with the EUIPO in 2008, in relation to international classes 9, 12, 14, 16, 18, 20, 22, and 25. These cover carry cases, vehicles, watches, passport holders, luggage, sleeping mats, tents, and clothing.
In June 2014 luggage retailer Swissgear Sàrl applied to invalidate the mark in respect of all of the above classes. The request was denied, apart from with regards to class 14: ‘watches of Swiss origin’.
Swissgear appealed to the EUIPO, seeking invalidation of the trademark in all classes.
The Fifth Board of Appeal upheld the decision on class 14 in September 2016, and in addition found the mark invalid in relation to all classes, thereby overturning that part of the previous finding.
It found the word ‘gear’ to be descriptive in relation to all goods in question, except vehicles, and the word ‘Swiss’ to refer to geographical origin in all classes. Consequently, the combination would be understood as referring to things, or accessories, from or made in Switzerland.
The appeals board also found a relationship between the geographical indication and the goods covered by the mark, further demonstrating the descriptive quality of the mark.
Wenger appealed, requesting that the court annul the decision and order the EUIPO to pay costs.
The company alleged that the EUIPO has registered many trademarks containing the term ‘Swiss’, but the court held this as irrelevant, saying that decisions must be assessed in relation to the relevant regulation, not on “previous decision-making practice”.
Wenger argued that the combination of the terms in the mark is “unusual and original”, particularly as it is written as “one grammatically incorrect word” which results in the creation of a notion which “means more than the mere sum of its constituent terms”.
The court agreed with the EUIPO that both words, ‘Swiss’ and ‘gear’, are descriptive. It also found that the combination of the two descriptive terms is not of an “unusual nature” capable of “diverting the relevant public’s attention from those two descriptive terms”.
That the “adjective ‘Swiss’ has been placed next to the noun ‘gear’ without the two words being separated by a space” does not alter this.
The court confirmed that a word sign must be refused registration if, as in the present case, “at least one of its possible meanings designates a characteristic of the goods or services concerned”.
The court dismissed the action and ordered Wenger to pay the costs incurred by both the EUIPO and Swissgear.
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