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The Swiss Administrative Court has upheld a decision of the Federal Institute
of Intellectual Property (FIIP) in which the latter had refused
to register the word mark QATAR AIRWAYS for paper goods in Class 16
and services in Class 39 of the Nice Classification (Case B-5786/2011, November
23 2012).
On January 28 2009 Qatar Airways QCSC applied for the registration
of the word mark QATAR AIRWAYS with the Swiss trademark registry
(Application No 50905/2009). The application sought protection for
"paper, cardboard and goods made from these materials (not
included in other classes); printed matter; bookbinding material;
photographs, stationery; adhesives for stationery or household
purposes; artists' materials; paint brushes; typewriters and
office requisites (except furniture); instructional and teaching
material (except apparatus); plastic materials for packaging (not
included in other classes), printers' type; printing
blocks" in Class 16 and "transport; packaging and storage
of goods; travel arrangements" in Class 39.
The FIIP rejected the application on June 8 2009, holding
that:
the trademark was descriptive and deceptive with regard to all
claimed goods and services; and
therefore, registration of the mark would violate Swiss and
international law.
The applicant responded to the refusal by claiming that the
trademark possessed, if not inherent, acquired distinctiveness
through extensive use. The FIIP thereafter allowed the registration
of the mark for "bookbinding material; photographs,
stationery; adhesives for stationery or household purposes;
artists' materials; paint brushes; typewriters and office
requisites (except furniture); plastic materials for packaging (not
included in other classes), printers' type; printing
blocks" in Class 16. For the remaining goods in Class 16 and
all the services in Class 39, the FIIP withheld its refusal. On
September 16 2011 the FIIP issued a final refusal after the
applicant had made two additional submissions claiming inherent and
acquired distinctiveness.
On October 19 2011 the applicant appealed to the Swiss
Administrative Court, requesting that the FIIP's decision be
reversed in its entirety and that the trademark QATAR AIRWAYS be
admitted for registration. In its appeal, the applicant claimed,
among other things, that:
its trademark should be treated in the same way as the
trademarks BRITISH AIRWAYS and SOUTH AFRICAN AIRWAYS, which were
registered based on acquired distinctiveness; and
the requirement of proof of acquired distinctiveness in all
parts of Switzerland be waived due to the fact that there is no
internationally important airport in the Italian part of
Switzerland.
The court dismissed the appeal and upheld the FIIP's
decision.
With regard to the products in Class 16, the court held that the
mark could describe their content. Contrary to the decision in the
PIRATES OF THE CARIBBEAN case, the
court held that there was no additional element in the QATAR
AIRWAYS mark that could render it fanciful. Concerning the
transportation services, the court ruled that the mark was directly
descriptive and that there were no exceptional circumstances that
would allow registration. In contrast to the ROYAL BANK OF
SCOTLAND and SWISS ARMY cases, the court saw no
reason to favour the applicant on the grounds that it was the only
national airline, since the latter had failed to provide sufficient
proof that it was, actually and legally, the sole national airline
of Qatar. The court also considered extensively the documents
provided by the applicant to establish proof of acquired
distinctiveness of its mark, and concluded that most of the
documents did not pertain to use of the mark itself or use of the
mark as a trademark, but rather to use as a company name. Finally,
the court dismissed the 'equal treatment' argument, holding
that the circumstances were different in the cited cases.
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