http://ipkitten.blogspot.com/2019/09/the-ipkat-cannot-register-igp-for-paint.html
Kat readers familiar with geographical indications (GI) may primarily think of cheese, wine or bakery products when discussing this topic. One of the peculiarities of the (recently revised) Swiss legislation on protected designations of origin (PDO) and protected geographical indications (PGI) is the possibility to register a geographical indication for non-agricultural products (think knives, watches or minerals, for example). Whereas this new IP instrument does not seem to have sparked a huge interest among prospective right holders [as of today not a single geographic indication for non-agricultural products has been registered in Switzerland], it does seem to have sealed the fate of a trade mark application that could easily have sailed through registration in another place at another time.
The Case
The applicant, a Swiss company by the name of IGP Pulvertechnik AG, applied for the registration of the word mark “IGP” inter alia in class 2 for “paint, varnish, pigments [etc.]”. The application was rejected in class 2 (but it was accepted in classes 40 and 42) by the Swiss Federal Institute of Intellectual Property (FIIP). The FIIP’s reasoning was that “IGP” or “indication géographique protégée” is French for “PGI” and the relevant products (i.e. paint) may be mistaken for being protected by a PGI. The applicant appealed to the Federal Administrative Court (FAC) and asked that the decision be set aside.
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The use of the abbreviations “PDO” or “PGI” is required by law on the labelling of any product that is manufactured based on the specifications of the respective registered PDO or PGI. Thus, all competitors must remain free to use these abbreviations.
But is the brand “IGP” the same as the abbreviation “IGP”? And if not, can consumers distinguish the former from the latter? The FAC thinks they cannot. The abbreviation “PGI” or “PDO” is often used on the relevant product, without any mention of the geographical origin (the FAC mentions Swiss Cuchaule as an example; Kat readers may be more familiar with, say, Feta). Thus, the relevant public will not understand “IGP” as a brand just because there is no mention of a geographical origin.
This begs the more fundamental question of whether there is a difference between the use of a sign “as a trade mark” and the use of the same “as an abbreviation of a registered GI”. The FAC thinks there is a difference, but an irrelevant one. Trade mark use (as defined in Swiss law) relates to the identification of origin as the distinguishing function of a sign. This is particularly the case if the use designates goods or services that are offered in the course of business on Swiss territory.
The abbreviations “PGI” or “PDO” are also used to distinguish goods in the course of business, more precisely goods that are registered in the relevant Register of GI. “PGI” does not distinguish the source of the good itself, but rather it distinguishes “registered” goods from “unregistered” ones. Given that “PGI” is always used in connection with the product, the function of this abbreviation is to identify the relevant good as having certain specific characteristics and attributes (that are described in the register of GI). Such function is therefore similar to the function of a trade mark.
As a result, the distinction between “PGI” (or “IGP”) as a trade mark, and “PGI” (or “IGP”) as an abbreviation, is merely theoretical. There is no hierarchy and even less a clear difference between the use of trade marks and abbreviations for registered GIs. The sign has thus been ruled misleading and the appeal rejected.
Comment
The reasoning of the decision is sensible and the court can hardly be criticized for refusing the registration of trade marks that could be misunderstood as the abbreviation of a GI. What makes the decision interesting is that the products at stake are cans of paint, not wheels of cheese. Given the current lack of interest in non-geographical GIs, hardly anyone would think today of a “protected geographical indication” when purchasing a can of “PGI” paint. The court nontheless defends the outcome by underscoring that absolute grounds of refusal also include reasons that “may materialize only in the future”.
Picture on the right by Roland Zumbuehl, provided under CC BY 3.0
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