Registration of a service mark with an indication of origin without geographic restriction of the list of services where the origin is accurate

Facts

Swiss Re Ltd (respondent) applied on 19 April 2017 to the Swiss Federal Institute of Intellectual Property (IGE; appellant) for registration of the sign "SWISS RE - WE MAKE THE WORLD MORE RESILIENT" in the Swiss trademark register for services in class 36 (financial affairs; real estate affairs; financial services; insurance services) (application No. 54931/2017).

The IGE objected to the sign on 24 May 2017. It reasoned that the sign evoked expectations of origin and was therefore misleading. Registration was possible only if the list of services was restricted to services of Swiss origin (addition: "all the aforementioned services of Swiss origin"). Swiss Re Ltd disputed any risk of deception. By decision of 29 June 2018, the IGE rejected the application.

The Federal Administrative Court upheld the appeal of Swiss Re Ltd by judgment of 25 May 2020 and instructed the IGE to register the sign with the note "SWISS RE: partially acquired distinctiveness mark" without restriction to Swiss origin.

The IGE challenged this judgment by way of civil law appeal and requested that the lower court's judgment be set aside and the application be remitted. Swiss Re Ltd requested dismissal of the appeal. The Federal Supreme Court dismissed the appeal.

Issue in dispute: Whether the sign is excluded from trademark protection as a misleading indication of origin (Art. 2 lit. c TmPA) and whether the list of services must therefore be restricted to services of Swiss origin.

Considerations

Under Art. 30 para. 2 lit. c TmPA, the IGE rejects applications where absolute grounds for exclusion exist; misleading signs are excluded from trademark protection under Art. 2 lit. c TmPA. The risk of deception is in principle assessed with regard to the specifically claimed goods and services. Indications of origin are direct or indirect references to geographic origin (Art. 47 para. 1 TmPA). Incorrect indications of origin and marks in connection with goods or services of foreign origin where there is a risk of deception are impermissible under Art. 47 para. 3 TmPA.

The practice is strict in two respects: the doubt rule, under which the IGE may register in case of doubt and leave the decision to the civil judge, does not apply to the risk of deception. Moreover, an abstract risk of deception suffices, and the permissibility of accurate use does not exclude the risk of deception. Future developments may be taken into account, but a merely minimal probability of future deception is not sufficient.

For some time the IGE has required, for trademarks with geographic indications, an addition stating that the goods must originate from the country concerned. The Federal Supreme Court has supported this practice (BGE 132 III 770). The reasoning is that the IGE in the registration procedure has no knowledge of actual use, so that without restriction a risk of deception must readily be assumed. Legal scholarship has partly criticised this practice, but the parties did not challenge it in the present proceedings. The question whether the practice also applies to services therefore remained open.

With the 'Swissness' revision effective 1 January 2017, the criteria of origin for goods (Art. 48 ff. TmPA) and services (Art. 49 TmPA) were specified, in particular the place of actual administration (Art. 49 para. 1 lit. b TmPA, specified in Art. 52o TmO). The IGE subsequently announced that it would in future generally restrict service lists to services from the place of origin, and adapted its guidelines accordingly.

In the view of the Federal Supreme Court, this new practice of the IGE goes too far. If there is from the outset no risk of deception, there is no reason to restrict the list. In the present case the sign meets the requirements of Art. 49 para. 1 TmPA: the registered office of the respondent is undisputedly in Switzerland, as is the place of actual administration. The indication of origin is therefore accurate, and the sign is permissible within the meaning of Art. 2 lit. c and Art. 47 para. 3 TmPA.

The origin of goods is defined by reference to the product, whereas that of services is…