Change of practice of the Swiss Institute regarding « event trademarks »
An auto goal for FIFA - 4A_518/2021
While FIFA wanted to have the trademarks "PUMA WORLD CUP QATAR 2022" and "PUMA WORLD CUP 2022" registered by PUMA SE cancelled, its trademarks "QATAR 2022" and "WORLD CUP 2022" were declared invalid by the Federal Court.
Misleading signs are absolutely excluded from the protection of the Trade Mark Protection Act (TmPA). In this decision, the Federal Court found that the trademarks registered by PUMA SE unquestionably refer to the FIFA World Cup 2022 and that PUMA SE has thereby created the false impression that it has a connection with the event. As a result, the two registered trademarks "PUMA WORLD CUP QATAR 2022" and "PUMA WORLD CUP 2022" were deemed invalid by the Federal Court.
At the same time, PUMA SE requested that the trademarks registered by FIFA be cancelled for lack of distinctiveness. Event trademarks must also be sufficiently distinctive to allow the public to associate the event with its organizer. In this case, although the trademarks "QATAR 2022" and "WORLD CUP 2022" certainly refer to the World Cup, they do not allow for a direct association with the organizer of the event. As a result, the Federal Court ruled that the trademarks registered by FIFA are invalid under the TmPA.
As a result of this ruling, the SFI is forced to change its practice to comply with the Federal Court's decision.
In its newsletter of September 29, 2022, the SFI states that it will in principle generally refuse the registration of word trademarks (without added distinctive elements) such as those annulled by the Federal Court, in the case that the combination is perceived by the relevant public as a reference to an event. These signs will be considered as belonging to the public domain for all goods and services. This practice will be applied if the place of the event is known and the year is relatively close. Adversely, signs such as GIMEL 2030 or PARIS 1234 can still be registered as trademarks.
After reading this decision and the SFI’s communication, we would like to draw the attention of our readers to the importance of the trademarks’ distinctive character. The addition of a figurative element to a verbal element is a good way to increase the singularity of a sign.