Facts
The company F.M. Hämmerle, based in Dornbirn (Austria), registered the word mark "Novelin" in the International Trademark Register on July 7, 1955, under the Madrid Agreement of 1891/1934, covering, in particular, the following products: "Clothing, underwear; yarns; textile fibres; blankets, curtains, tents, sails, bags; fabrics, knitted fabrics". On October 5, 1955, the Federal Institute of Intellectual Property informed the International Bureau that the trademark could only be partially protected in Switzerland, i.e., only for linen products, on the grounds that the use of the trademark for other products would be likely to mislead the public as to the nature of the goods (Art. 6B(3) of the Paris Convention for the Protection of Industrial Property; Art. 14(1)(2) TMA). The trademark owner appealed against this partial protection decision.
Considerations
The Federal Tribunal considers that the "Novelin" trademark can be refused protection in Switzerland to the extent that it is likely to mislead buyers. Indeed, the use of this trademark for textile products other than linen risks giving consumers, particularly in the French-speaking region, the impression that the product is made of linen, which would not be the case. Although many other fabric names end in "lin" without actually designating linen, the "Novelin" trademark is a fanciful…