Both RepXpert and XPERTSELECT are international trade marks with the base registration in Germany seeking extension of protection to Switzerland. The Swiss IPO refused protection in both cases. On appeal, the Federal Administrative Court allowed RepXpert to register, but not XPERTSELECT. The cases are interesting because they were decided on consecutive days on 15 and 16 July 2009, and may illuminate where to draw the line on lack of distinctiveness (note that both are "pure" word marks, the image is taken from the applicant's website for illustration only).

RepXpert sought protection for various services in connection with car repair, the provision of information about car repair, shipping of spare parts and related. The court held that while "rep" alluded to "repair" in connection with the claimed services, it also had many other meanings. It was not at all clear that the relevant consumers would perceive REP as short for REPAIR. Because REP was reversing the characters PER in the second part of the word and creating a "symmetry" around the large cap X, the trade mark had a certain originality.

XPERTSELECT claimed protection for services related to personnel selection, placement, provision of temporary labour and related. Here, the Federal Administrative Court held that the relevant consumers would understand the trade mark to signify "expert at selection" or "selection of expert(s)". As such, it was an indication of the quality of the claimed services and descriptive. The minor misspelling of XPERT did not make the trade mark distinctive.

I think the cases underline how difficult it is to predict the outcome of such cases; they are really close, yet - for the Federal Administrative Court - distinguishable.

NOTE: Both cases are not final, they can be appealed to the Federal Supreme Court. I will post an update should the Supreme Court decide on either, or both, of the cases (in Switzerland, the IPO can appeal cases it looses, so it is possible that RepXpert goes up).