Rejection of Trademark Protection for the Word/Device Mark "ePostSelect (fig.)"

Facts

The Swiss Federal Institute of Intellectual Property (IGE) rejected the trademark registration application of Swiss Post AG for the word/device mark "ePostSelect (fig.)" on the grounds that the sign lacks inherent distinctiveness and therefore belongs to the public domain. Swiss Post AG appealed against this decision. The Federal Administrative Court upheld the appeal in the sense of the subsidiary application and instructed the IGE to grant protection for the mark "ePostSelect (fig.)" with the color claim "black, yellow (RAL 1004, Pantone C 116/109U)" for the applied goods and services. The IGE then filed a civil law appeal with the Federal Supreme Court.

Considerations

The Federal Supreme Court upholds the IGE's appeal. It states that the word/device sign "ePostSelect (fig.)" lacks inherent distinctiveness without specification of the color claim. The specification of the yellow tone in the sense of the subsidiary application does not change this, as the yellow color in the trademark representation remains identical and only the description is specified. This circumstance alone is not sufficient to give the sign the necessary inherent distinctiveness.

The Federal Supreme Court criticizes that the Federal Administrative Court has mixed the protection requirements for inherently and derivatively distinctive trademarks. In examining inherent distinctiveness, the sign must be considered abstractly, independent of its use. Only if a sign…