A US company MD Science Lab filed a trade mark application
number 2012718142 for Swiss Navy in respect of goods in class 5
(pharmaceuticals). The patent office refused the registration
because the claimed designation includes the word element
Swiss. In the opinion of the patent office the word "swiss"
would be confusing with regard to the location of the applicant
and place of production of goods because the applicant is a US
resident. For the sake of justice it should be noted that not
so many Russians would understand that this Latin word
The applicant appealed the decision of the patent office.
However the Board of Appeal upheld the decision of the
examiner. It explained that the claimed designation includes an
adjective "swiss" pointing to a certain country and a noun
"navy". Hence, given that the applicant is a company located in
the US, the conclusion made by the examiner that the claimed
designation may mislead with respect to the location of the
applicant and place of production of goods should be recognised
as well grounded.
The Board of Appeals rejected the arguments of the applicant
who argued that false associations which might arise among the
consumers would not be misleading because Switzerland is
situated in the centre of Europe, it is a mountainous country
and everybody knows that it does not have access to seas and
cannot have a navy. The applicant also argued that the two
words cannot be viewed separately and that this word
combination should be understood as "Swiss navy blue". The
false indications pointed out by the examiner and the Board of
Appeals are not plausible.
One may wonder if the Board of Appeals would accept such
registrations as "Martian Navy" or "Lunar Navy". It is common
knowledge that at least the Moon has "seas".
The Board of Appeals continued to state that falseness of
the word element "swiss" is obvious. As to the probability of
associations which may have an average Russian consumer he may
not possess profound knowledge about the structure of
government bodies of Switzerland and it is probable that he may
believe that Switzerland may have a maritime body and believe
that the designation Swiss Navy is authentic.
In rejecting the application, the Board of Appeals
circumstantially offended the level of education of Russian
people believing that the education of Russians is so poor. For
the sake of justice it should be pointed out that confusing
situations may happen in any country. Thus, back in 1914 the US
President invited the non-existent Swiss Navy to attend the
celebration on the occasion of opening the Panama Canal (the
invitation was recalled in time) or, quite recently, a US
spokesperson promised to send the US Navy to the shores of
Belorussia which is situated 1,000 miles from the sea.
Anyway, the probability of confusion in certain situations
should not be a bar to registration.
Gorodissky & Partners
Russia 129010, Moscow
B. Spasskaya Str
25, stroenie 3
Tel: +7 495 937 6116 / 6109
Fax: +7 495 937 6104 / 6123