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CLASS 46


Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.

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Anthonia Ghalamkarizadeh
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Christian Tenkhoff
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Yvonne Onomor
MONDAY, 6 OCTOBER 2014
Switzerland: bet you never heard of this ground of refusal

The German retailer Otto sought to extend the protection of its SC STUDIO COLETTI (fig., see above) mark, claiming protection for jewellery, leather goods, clothing and shoes to Switzerland. The Swiss Institute for Intellectual Property refused, and the Federal Administrative Court confirmed on appeal.

No, not because the mark could create the (incorrect) impression that the goods originated from Italy (don't give them bad ideas). No, ground for refusal was that "SC" is a protected abbreviation for the Stockholm Convention on Persistent Organic Pollutants, an international environmental treaty, signed in 2001 and effective from May 2004, that aims to eliminate or restrict the production and use of persistent organic pollutants (POPs). I guess it stands for "Stockholm Convention". Don't ask my why a treaty needs a protected abbreviation.

Under Swiss law, such protected abbreviations cannot be registered as marks irrespective of whether any likelihood of confusion with the designated treaty or organisation is created. Given the Supreme Court's case law, the Federal Administrative Court had little choice but to uphold the IIP's decision.

I have argued previously and at length that this interpretation of the international obligations under art. 6ter(1) Paris Convention  is ridiculous. I think this case proves my point better than I ever could have.

Decision B-2768/2013 of 2 September 2014 (not yet final, could be appealed to the Supreme Court)

Posted by: Mark Schweizer @ 08.40
Tags: Switzerland, absolute grounds of refusal,
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