The Swiss Federal Administrative Court has allowed the registration of the trademark GAP for goods in Class 28 (Case B-3458/2010, Feb. 15, 2011) and overturned the earlier decision of the Federal Institute of Intellectual Property (IGE) refusing the trademark as merely descriptive.
The U.S. company Gap (ITM) Inc. sought to register the trademark GAP for goods in Class 28, comprising games and playthings. The IGE refused to register the mark because Gap is the name of a city in France with 40,000 inhabitants. The IGE stated that owing to the city’s geographical location and tourist attractions (e.g., the Tour de France went through Gap), it had to be assumed that the city of Gap was known to the Swiss population. As such, it was not only a direct geographical indication but also, if the goods did not originate from France, a deceptive mark.
Gap (ITM) Inc. appealed the decision to the Swiss Federal Administrative Court. Among other arguments, the company maintained that the mark had acquired secondary meaning.
The court carefully analyzed the word “gap.” It agreed with the IGE that Gap was indeed a city in France, but it went on to say that the city, although close to Switzerland, had little importance as tourist destination and therefore was only known to a small part of the relevant consumers. However, the court noted, the word “gap” could be understood in various ways. It concluded that the English word “gap” (in the sense of a hole or space) was known to a much larger part of the relevant consumers. Furthermore, “gap” had several other meanings, such as an acronym for “Government Accountability Project” or “Great Adventures People,” and also as a trademark of the appellant. Although the court did not answer the question of secondary meaning, it held that the mark was perceived as a coined trademark, as the majority would not associate it with the city of Gap. As such, it was considered distinctive and not deceptive.
Finally, the court assessed whether Gap, as a geographical indication, had to remain free for use by any third parties from the city of Gap. The court held, on the one hand, that Gap was not known as an industrial city and, on the other hand, that the GAP trademark was already registered in France and the European Union, so that there was no need for Switzerland to grant any further protection to third parties. Consequently, the appeal was successful and the trademark finally registered in Class 28 (the decision has since become final).
This decision once more shows that trademarks consisting of merely geographical indications are still highly disputed in Swiss practice. While the IGE tends to assume that geographical names are generally known by the Swiss public (and therefore basically not registrable), the Administrative Court does not always share this view. Geographical places such as Bellagio (decision B-7411/2006), Park Avenue (decision B-2642/2008) or Victoria (decision B-6562/2008) were considered not to be known by the Swiss public.
The decision is available online in German at www.bvger.ch
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© 2011 International Trademark Association