In many jurisdictions, non-conventional trade marks are in principle recognised as valid and viable trade mark types, but trade mark owners seeking to register such marks will often face special problems, with stricter registrability tests being applied than in the case of conventional trade marks. This is certainly also the situation in Switzerland under current practice. However, in a recently published decision, the Federal Supreme Court established for the first time in its practice the criteria for registrability of musical marks (sound marks consisting of a sequence of musical notes) and thereby significantly facilitated the registration of such marks compared to the previous practice of the Swiss Trade Mark Office and the Federal Administrative Court.
The decision (4A 566/2008) related to the musical mark illustrated.
The mark had been refused registration by the Trade Mark Office and the Federal Administrative Court essentially on the grounds that it was non-distinctive and would not be perceived by consumers as a trade mark. The Trade Mark Office even held that any musical mark without language elements would generally qualify as not inherently distinctive.
The Supreme Court, by contrast, held that
- non-verbal sounds are in reality often used as trade marks, and if correctly used, will be readily recognised by the public as a reference to a particular origin of goods or services, so that there are no reasons to apply stricter registrability tests than to conventional marks;
- for a musical mark to qualify as distinctive, it is sufficient for the mark to be non-descriptive and for consumers to be capable of re-recognising it, which will generally be the case if the mark is short and catchy, has a comparably simple structure and conventional harmonics, and does not feature or convey any particular meaning;
- a musical mark can qualify as descriptive because it is already well-known in combination with lyrics which describe the products at issue, or the melody of the musical mark itself is descriptive for the products, or the general theme of a known melody results in descriptive character (for example, the melody of a Christmas carol would qualify as descriptive for Christmas tree decorations);
- famous musical compositions will often qualify as non-distinctive because consumers will perceive them as promotional means, and not as a trade mark.
Based on these criteria, the Supreme Court held that the mark at issue featured no particular meaning, was short and catchy for the average consumers of the specified goods (chocolate and confectionery), and accordingly was registrable.
This judgment will considerably facilitate the registration in Switzerland of musical marks, which represent an important and, in economic reality, long-recognised and established type of trade mark.
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| Brendan B Bolli and Rainer U Schalch |
E Blum & Co AG
Vorderberg 11
CH-8044 Zurich, Switzerland
Tel: +41 43 222 56 00
Fax: +41 43 222 56 01
mail@eblum.ch
www.eblum.ch