The Swiss Institute for Intellectual Property (IPI) today announced that it intends to move away from its particularly strict (and much disputed) practice to request the specification of a trademark consisting of or containing an indication of origin to be limited to goods and/or services originating from such geographical area. To date, trademarks that contain a reference to a geographic indication of origin which is known to the relevant Swiss public, for instance the trademark ABC PARIS or a figurative mark containing in addition to the distinctive word elements the stylized image of the Tour d'Eiffel, were considered misleading - unless the specification of such mark was limited to "all goods originating from France". A practice which was "unique" in Europe.
The IPI now wants to align its practice with the approach followed by the EUIPO and the national offices of the EU Member States : A trademark consisting of or containing a geographic indication of origin is not misleading as long as its correct use is possible. If that is the case, no limitation of the specification will be required. Only few exceptions shall apply, in particular in areas where there is an explicit or implicit legal obligation to restrict the specification (e.g., with regard to agricultural and non-agricultural protected designations of origin (PDO) and protected geographical indications (PGI)).
The IPI announced that it will submit the proposed amendments for public consultation between October 15 and November 15, 2021. We hope that the amendments will become effective on 1 January 2022.
This long awaited and in my view highly welcomed step will lead to an overall simplification of the examination protocol and decrease of provisional refusals issued, and, thus, overall, to a more speedy examination of trademark applications in Switzerland.
Right holders should now consider suspending the examination of their applications which are still pending (and/or even already have been provisionally refused), review their existing trademark portfolios, and refile trademarks which had been objected to in the past and which therefore contain a geographically restricted specification. Not only to broaden the scope of trademark protection, but also to avoid that the marks potentially become vulnerable for non-use.
Praxislockerung betr. die geografische Einschränkung der Waren- und Dienstleistungsliste (WDL) bei Marken mit einer Herkunftsangabe