PASSIONATELY SWISS is Geographically Descriptive
On 15 December 2011, the General Court of the EU (the ‘Court’) released its judgment in the Mövenpick Holding v OHIM case.
The key issue considered by the Court was whether OHIM had erred in refusing Mövenpick Holding’s Community Trade Mark Application for ‘PASSIONATELY SWISS’ for goods and services in Classes 16, 35, 41, 43, and 44 on the basis that the mark applied for consisted ‘exclusively’ of a sign which may serve to designate the geographical origin of the goods and/or services in question (pursuant to article 7(1)(c) of the Community Trade Mark Regulation) and that the mark was also devoid of any distinctive character (pursuant to article 7(1)(b) of the Community Trade Mark Regulation) as it only expressed a 'laudatory and promotional’ statement.
Contrary to what Mövenpick Holding argued, the Court held that the relevant public for the purposes of an article 7(1)(c) assessment was not the Swiss public. This is because OHIM’s assessment of the ‘ground of non-registrability’ is in respect of the whole or part of the Community (article 7(2)) and Switzerland is not an EU Member State. Therefore, the relevant public consisted of all consumers in the EU capable of understanding the English words ‘passionately’ and ‘Swiss’, ie, the average Anglophone consumer.
The Court agreed with OHIM that the mark applied for consisted exclusively of an indication of geographical origin. The presence of ‘PASSIONATELY’ did not affect the descriptive nature of the mark; this is because the combination of the two words was not inventive and the adverb was simply used to ‘reinforce the concept of Swiss’. Although Mövenpick Holding argued that certain consumers may perceive the combination as inventive (and therefore not descriptive), the fact that at least one of its possible meanings was descriptive of one of the characteristics of the goods/services was fatal to the application.
The Court further agreed with OHIM that there is a link between the indication of geographical origin, ‘SWISS’, and the goods and services covered by the application. The Court first reiterated that the rationale behind article 7(1)(c) is to prevent a market operator from monopolising the use of a descriptive term in relation to certain goods and services to the detriment of its competitors. Secondly, it observed that the nature of OHIM’s assessment of the link between a geographical name and the relevant goods/services will depend on a number of factors. Where the geographical name is widely known and/or has a specific reputation, OHIM can simply acknowledge the existence of a link rather than carrying out an actual assessment. On the facts, Switzerland is not only known as a State but also for the high quality of the goods/services originating from it. Therefore, the use of the adjective ‘SWISS’ was capable of conveying both a geographical connotation and indication of quality.
As the Court rejected Mövenpick Holding’s appeal on the basis of Article 7(1)(c), it decided not to consider the second ground of appeal (i.e. article 7(1)(b)).