Facts
Foot Locker Retail Inc. (the opposing party) applied on April 6, 2004 for trademark protection for the sign COLORADO for various goods in Classes 18 and 25. The Swiss Federal Institute of Intellectual Property (IGE) rejected the application with reference to Art. 2 lit. c in conjunction with Art. 30 para. 2 lit. c of the Swiss Trademark Act, as the sign was considered misleading for goods not originating from the USA.
The Federal Appeal Commission for Intellectual Property overturned the decision of the IGE and instructed it to fully comply with the trademark registration application. It was of the opinion that the previous practice of limiting trademark protection to goods of the stated geographical origin had to be changed.
The Federal Supreme Court upheld the administrative court appeal of the Federal Department of Justice and Police against the decision of the Appeal Commission.
Considerations
According to Art. 2 lit. c of the Swiss Trademark Act, misleading signs are absolutely excluded from trademark protection. A trademark is misleading if it contains a geographical indication and thereby leads the addressees to assume that the goods originate from the country or place indicated, even though this is not the case in reality.
The Federal Supreme Court concluded that the word/device mark COLORADO is understood by the Swiss public as an indication of the U.S. state of Colorado. Therefore, there is a…