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Careful with geographical names

February 2018. Swiss watch and knife-maker Wenger has been refused trademark protection in Europe for the word mark Swissgear after the European General Court ruled that the name was purely descriptive.

Competitor

When Wenger originally applied for EU trademark registration in 2008, no-one batted an eyelid and the application went through without comment. In 2014, however, a Swiss competitor challenged the trademark and called for the registration to be annulled.

‘Swiss’ not distinctive

The challenge proved successful. On 23 January 2018, the European General Court concluded that the word Swissgear was not after all distinctive. Its ruling stated that not only was the word ‘gear’ (equipment) descriptive, so was the word ‘Swiss’, which could be taken to refer to products originating from Switzerland.

Geographical name risk

Companies run a significant risk if they include the names of places or regions in their trademarks. If this makes it look as though the products come from those places, then nothing can be trademark protected. That’s why the Monaco and l’Argentina brands (for clothing) failed to gain protection and why the name of the supermarket chain Iceland is currently coming under heavy fire.

Not everything taboo

On the other hand, not every geographical designation is taboo. If the place mentioned is completely unknown, there may be no difficulty. The name Chipindo, for example, can be protected as a trademark for clothing despite also being the name of a little-known town in Angola. The same is true if the consumer is unlikely to believe the product comes from the place that’s named. This is sometimes known as the Mont Blanc exception, since nobody thinks the pens are actually made on a mountain-top 4,000 metres above sea level.

Alaska cigarettes and Mont Blanc pens have been given trademark protection, but l’Argentina clothing has not

Bas Kist