Registration of Swiss trademarks with indications of origin

The Swiss Federal Institute of Intellectual Property ("IPI") is changing its long-standing practice and will no longer require an explicit geographical restriction of the list of goods and services for the registration of trademarks with an indication of geographical origin. Until now, IPI had made the registration of such trademarks dependent on a limitation of the geographical origin of the claimed offers. From 1 March 2022 on, the general requirement of a geographical restriction will only apply in a few specific cases. 

Explicit restriction as a previous requirement

The previously practiced restriction requirement for trademarks with geographical indications was not based directly on the Trademark Protection Act ("TPA"), but it rather was IPI's own interpretation of the absolute grounds for refusal, according to which a trademark may neither be misleading (Art. 2 lit. c TPA in German) nor violate applicable law (lit. d).

When examining necessary restrictions, IPI regularly focuses on the prohibition of misleading use: Until now, the possibility of correct use as such was not sufficient for indications of source to be admitted for registration as a trademark (previous Guidelines of IPI in Trademark Matters of 1 January 2021, "Guidelines 2021", part 5, point 8.6.1, p. 192, in German). IPI only allowed signs that contain or consist of an indication of source to be protected as trademarks if "any risk of confusion could be excluded, by limiting the list of goods" (i.e. also the mere abstract danger of misleading; Guidelines 2021, part 5, item 5.1, p. 164 f, item 8.6.1, p. 192, see on the non-application of the rule of doubt and the strict examination of the correctness of indications of origin also the Federal Court judgement 4A_361/2020 consideration 2.3 in German).

In order to exclude any risk of misleading, IPI previously required the explicit restriction of the geographical origin in the trademark register for both goods and services. This had an impact, in particular, on the possibilities of proving use for the purpose of preserving rights: Evidence of trademark use to identify offers of other geographical origin was not suitable to prove the right-preserving use of the trademark with geographical indication. Even as an initial application for trademark registration abroad (e.g. for new international trademark campaigns), the restriction of geographical origin had consequences: Both for national applications abroad based on a Swiss priority application and for international registrations based on the Swiss registration of the basic mark, the WDL for the Nice classes to be considered may not go further than for the first application/base mark. Since the geographical restriction reduced the scope of protection of the mark, the foreign applications based on it were not allowed to be made without this restriction. However, foreign trademark offices sometimes do not know this practice or do not follow it, which is why the trademark applicant risked objections abroad.

IPI rarely granted exceptions to the restriction requirement, namely only if it assumed that the trademark clearly did not arouse any expectation of geographical origin in the relevant average public. This was only the case for a few specific goods and services (see Guidelines 2021, Part 5, Section 8.4.7.1 ff. p. 183 ff.).

Without such a restriction, applications for trademark registrations were (provisionally) refused. The applicant could restrict the application accordingly or risk definitive rejection. Arguments against the restriction were sometimes successful. In many cases, the arguments were not directed against the restriction practice per se, but rather against the question of whether the sign in question creates an expectation of geographical origin at all. If the answer to this question was in the affirmative and if it could not be shown that the sign had become established in the market, there was no way around the formulated restriction in the register in recent years. Nevertheless, the divergent treatment of IPI and the courts sometimes leads to legal uncertainties, which IPI is trying to eliminate with the change in practice.

Change in practice expected

Until the end of 2016, the requirement only applied to goods, i.e. Nice classes 1-34 (in German). In the case of applications for these classes, a restriction had to be made at the end of the list per class as follows: "all aforementioned goods of Swiss origin", or a corresponding wording in the case of a foreign indication of origin. For services, IPI only required compliance with the requirements for the geographical origin of services (old Art. 49 TPA until 31 December 2016, in German). In the case of an applicant domiciled in Switzerland, it assumed that the requirements were met. Therefore, the applicants did not have to include an explicit restriction in the list of services.

With the so-called Swissness revision, IPI's registration practice became stricter: as of 1 January 2017, IPI also required the explicit restriction in the list to a country- or region-specific origin for service classes (i.e. Nice classes 35-45), again as its own interpretation of the legal requirements. For trademarks with Swiss indications of source, the restriction for services was by default "all aforementioned services of Swiss origin".

In the meantime - and without changing the statutory basis - IPI has already further adapted its practice on the restriction requirement. Among other things, since December 2020 it has allowed restrictions to refer only to the origin of raw materials or to a production step (based on Art. 47 para. 3ter TPA), e.g. "all aforementioned goods whose design has taken place entirely in Switzerland". The prerequisite for this is that the indication of source refers to a production step and that the following restriction is also made in the register (translated from German): "The sign element "[indication of source]" is not emphasized with regard to color, font size and graphic design". Such an entry is not possible in combination with the Swiss cross or other elements that indicate a geographical origin of the offer as a whole (Guidelines 2021, part 5, section 8.6.5.2).

For services, IPI relaxed the restriction practice as late as March 2021 (Newsletter IPI 2021/04 Trademarks of 23 April 2021, in German): Provided that the filing private individual was domiciled in Switzerland or, in the case of a legal entity, both the domicile of the filer was in Switzerland and the majority of the authorised signatories entered in the commercial register were domiciled in Switzerland, IPI refrained from explicitly restricting the origin of the service. IPI referred to Art. 49 TPA (introduced in 2017), which, however, does not explicitly mention the residence requirement for authorised signatories. Although the practice, which had been tightened up in the course of the Swissness revision, was slightly relaxed again, the different handling of goods and services in the register was not really comprehensible.

Simplified examination

According to IPI, its announced change in practice is based in particular on the practice of foreign trademark offices (IPI Newsletter No. 5/2021 and 2021/09-1). The new rule states (translated from German): "At the time of trademark registration, an indication of source is not considered misleading as long as its correct use is possible". The relaxation of practice is based on the approach that a trademark is not considered misleading at the time of its registration in the register as long as its correct use is possible (departure from the previously relevant concept of abstract risk of misleading use, see also explanations on the new guidelines). Specifically, IPI abandons the general registration requirement of a geographical restriction of the list of goods and services in the presence of an indication of source. This will greatly simplify examination practice, which in turn will benefit applicants, as the examination of applications will be completed (even) more quickly.

IPI's relaxation of practice does not call into question the substantive criteria for determining an indication of origin (cf. in particular Art. 47 et seq. TPA). However, they lose practical significance in trademark examination due to the abandonment of the restriction (cf. explanations of the new guidelines). It is questionable whether the previous restriction practice had a deterrent effect on providers and offers that do not fulfil the expectation of origin.

IPI has now published adapted guidelines for this change in practice after a public consultation (Newsletter IPI No. 5/2021 and 2021/09-1). The change in practice will enter into force on 1^st of March 2022.

New trademark applications filed after 24 February 2022 and pending applications filed before that date will benefit from the new practice. This is particularly attractive when using the trademark to expand abroad.

Which trademarks do not benefit

Already registered Swiss trademarks with indications of source are not affected, i.e. restrictions already registered remain in the register.

Even after the entry into force, not all applications will benefit from the new practice. In certain cases, IPI will continue to require an explicit restriction, as the geographical indication of source enjoys special legal protection in these cases. A stricter registration practice can therefore be justified in the following special cases (see IPI Newsletter No. 5/2021 and 2021/09-1 for the categories):

• agricultural and non-agricultural protected designations of origin and protected geographical indications entered in the register of the Federal Office for Agriculture or the IGE (based on Art. 16 Agriculture Act, "AgricA"; Art. 41a Forest Act or Art. 50a TPA);
• Swiss controlled designations of origin for wines (Art. 63 AgricA);
• international registrations under the Geneva Act of the Lisbon Agreement, insofar as they are granted protection for Switzerland (according to the new Art. 50e TPA);
• protected designations of origin and protected geographical indications listed in Annexes 7, 8 and 12 of the sectoral agreement between Switzerland and the European Community, as well as foreign geographical indications (excluding names of countries and regions) listed in those bilateral agreements and free trade agreements between Switzerland and partner countries which provide for ex officio refusal in the case of trademark registration applications for goods or services of other origin (currently the bilateral agreements with Russia, Jamaica and Georgia as well as the free trade agreements with Japan and Mexico);
• foreign geographical indications for wines and spirits in accordance with Art. 23 TRIPS, provided they are protected in the country of origin as PDO/GGI or under another title (cf. the worldwide register of the Organisation for an International Geographical Indications Network - oriGIn);
• designations regulated in a sectoral ordinance (according to Art. 50 para. 2 TPA) - currently these are the Swissmade ordinances for watches and for cosmetics.

In the absence of an explicit restriction in the list of goods and services, IPI will in future refuse registration for the six categories mentioned for infringement of applicable law (Art. 2 lit. d in conjunction with Art. 30 para. 2 TPA). A possibility of exemption with the argument of acquired distinctiveness is (already today) excluded for the six categories mentioned.

What does not change for indications of source

It should be noted that indications of source in the sole position or with other non-distinctive elements continue to be considered as public domain and are in principle not registrable (Art. 2 para. lit. a TPA).

Nor does the change in practice regarding the registration of a trademark by IPI change the fact that indications of source may not be used in a misleading manner. Insofar as a sign arouses (or can arouse) an expectation of geographical origin in the (fictitious) average consumer, it may only be used for offers as a trademark or in advertising if it meets the corresponding requirements for this origin. Since 2017, Swiss law has contained detailed criteria for indications of origin on products and services, statements in advertising, etc. (cf. in particular Art. 47 et seq. TPA). Whether the use is misleading or not depends on the circumstances of the individual case. IPI has no knowledge of the actual use when it comes to the question of registration. Therefore, refusals of a sign for allegedly being misleading are limited to obvious cases. It will be up to the courts to sanction the use of inaccurate or misleading indications of source (Art. 47 para. 3 lit. a and c TPA; cf. also guidelines from 1^st of March 2022, part 5, para. 8.6.1, p. 189).

We advise owners of Swiss and international trademarks comprehensively on legal trademark strategy and measures to secure trademark rights. Our intellectual property team will be happy to assist you with your trademark protection in Switzerland and abroad. Please reach out to us.

Author: Delia Fehr-Bosshard

Categories: Intellectual Property, Information and Communication Technology, Media and Entertainment