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TUESDAY, 28 MAY 2013
Switzerland: WILSON is not a geographic indication of origin
The Swiss IPO refused the application for the trade mark WILSON for tobacco and cigarettes because Wilson was a city in North Carolina (home of the Whirligigfestival, apparently), and the relevant public would perceive the mark as an indication of geographic origin. The applicant appealed to the Federal Administrative Court, which reversed the decision, holding that WILSON was not primarily understood by the relevant consumers - the general public - as an indication of geographic origin, but rather as a surname. The IPO appealed to the Supreme Court.
Against all odds, the IPO lost the appeal (the IPO rarely loses before the Supreme Court). The Supreme Court held that the Administrative Court had, indeed, gotten some legal points wrong. Notably, under the Supreme Court's case law, there was a presumption (Erfahrungssatz) that marks containing a term that was a geographic indication would be understood as indications of geographic origin. It was not necessary to demonstrate this understanding with specific evidence. However, in the case at hand, the Administrative Court had come to the conclusion that the relevant public would not understand the term WILSON primarily as an indication of geographic origin, and this holding was binding for the Supreme Court, which only reviews questions of law.
This outcome is the main reason why the IPO has so far refrained from appealing the (quite numerous) cases where the Administrative Court reversed a refusal of registration because the IPO found the mark to be a geographic indication of origin. As long as the Administrative Court bases its decisions on factual grounds, such as the understanding of the relevant public, it is pretty safe from reversal by the Supreme Court - a fact that certainly has not escaped the judges at the Administrative Court. The German term for this is "berufungsfeste Begründung"...
Summary of the decision of 16 April 2013 here (in German, with link to full text).
Posted by: Mark Schweizer @ 17.55
Switzerland, absolute grounds for refusal, geographic indications of origin,
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