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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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TUESDAY, 22 SEPTEMBER 2015
Switzerland: MAUI JIM is from Maui

To the surprise of absolutely nobody, the Federal Administrative Court confirmed the IPO's refusal to allow the registration of the sign MAUI JIM for sunglasses. Maui was a fairly well known tourist destination and not principally an unsuitable location for the manufacture of sunglasses. Consumers were therefore deceived when sunglasses sold under the trade mark MAUI JIM did not originate from Hawaii.

Maui Jim, Inc., had also failed to prove "secondary meaning" of the sign MAUI JIM. The court re-iterated that the standard to prove secondary meaning (to overcome the objection of deceptiveness) was higher than the standard to prove acquired distinctiveness (to overcome the objection of descriptiveness). As a consolation to trade mark owners, the Federal Administrative Court did concede that the fact that a mark was well-known could alleviate any risk of deception, but only in connection with other factors.

Allow me a rant: the Administrative Court has held that use of the sign MAUI JIM is deceptive for sunglasses not originating from Hawaii (or at least the US - I presume they are mostly from China these days). According to art. 64(2) Swiss Trade Mark Act, the commercial use of an incorrect geographic indication is punishable by fine or imprisonment of up to five years. This offense is prosecuted ex officio. So, strictly speaking, any prosecutor in Switzerland who is aware of the decision and the use of MAUI JIM on sunglasses in Switzerland (which is quite extensive) would have to prosecute the responsible persons. Even in Switzerland, most would agree that this is ridiculous.

Decision B-608/2015 of 28 May 2015

Posted by: Mark Schweizer @ 09.37
Tags: Switzerland, absolute grounds of refusal,
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