L'eccellenza svizzera (la così detta SWISSNESS) e il marchio "geografico"

Abbiamo cercato di capire di cosa si tratta con Stefan Hubacher, partner e avvocato dello studio svizzero Fuhrer Marbach.

Stefan è specializzato nel settore della Proprietà Intellettuale con particolare attenzione ai marchi, alle indicazioni geografiche e ai design. Stefan è Co-head del gruppo IP dell'associazione di diritto bernese, nonché membro del comitato ECTA per le indicazioni geografiche. È docente di diritto di comunicazione presso il SAWI (centro di formazione svizzero per la commercializzazione, la pubblicità e le vendite) e un redattore contributivo del Giornale svizzero dei diritti di proprietà intellettuale e della Swiss Life Science Magazine (LSR).

The new 'Swissness' legislation foresees, among others, a new central register for so-called geographical marks. Can you explain which is the aim of this new type of trademark?

The geographical mark has mainly been created to facilitate the enforcement of geographical indications (GI) in Switzerland and abroad.

It was introduced in Switzerland on January 1st, 2017 in connection with the so-called Swissness legislation. This legislation was initiated based on the fact that Swiss products and services enjoy an excellent reputation in Switzerland and abroad and therefore the GI “Swiss” was (and is) used with increasing popularity. Unfortunately, it was also being used more frequently by free riders too, reason for which the Swiss legislator wanted to strengthen the legal protection for the 'Made in Switzerland' designation and the Swiss cross. Thus, whereas at the beginning Swissness was simply about preserving the value of the 'Swiss' brand, in the end, it became much more than that and resulted in a major revision of the Swiss trademark act, the Coat of Arms Protection Act and a couple of specific (existing and new) ordinances.

What is a Geographical mark and what can be registered?

The new geographical mark provides for the possibility of registering designations of origin and geographical indications as a “trademark” in the Swiss trademark register ("Valais Raclette" or "Gruyère" for cheese, for example).

As said, it allows to register protected designations of origin and geographical indications ("PDO/PGI") as well as wine designations (e.g. "Espesses" in the canton of Vaud) and indications of source that are subject of a Federal Council ordinance (e.g. for watches) or an equivalent foreign regulation.

Who can register a Geographical mark?

In contrast to an individual trademark, a geographical mark can only be registered by a representative group. For example, the industry organization "Interprofession of Gruyère" which has obtained the protected designation of origin (PDO) "Gruyère" could register the corresponding geographical mark. More precisely, the registration of a geographical mark may be requested by:

• the group which registered the designation of origin or the geographical indication, or where such group no longer exists, the representative group which has assumed the role of protecting this designation of origin or geographical indication;
• the Swiss canton that protects a registered wine appellation or the foreign authority responsible for the regulation of a wine appellation, as well as the group that obtained the protection of such a foreign wine appellation;
• the umbrella organization of an economic sector for which the Federal Council has enacted an ordinance or which acts on the basis of on an equivalent foreign regulation.

   

  How is a geographical mark filed, are there any specialties?

  The application for registration of a geographical mark must be filed with the Federal Institute of Intellectual Property (IPI), similar to the application of an individual trademark. The procedure, however, presents many particularities. Besides the limited circle of people entitled to obtain registration, it is mandatory to file a regulation which specifies the use-requirements of the geographical mark. Those rules must correspond exactly to the product specification of the respective GI. This requirement is the result of the particular nature of the geographical mark, leaving it freely available for all those fulfilling the conditions of use listed in the product specification.

  Why register a Geographical mark?

  As said, the geographical mark has several particularities compared to individual trademarks. One essential difference is that – although that it is a “trademark” registered in the trademark register – it does not grant a real monopoly to its owner. Rather its proprietor may only prohibit others from using the mark where such use contravenes the regulations. In effect, the geographical mark may – identically to its subject GI – be used by any person if the requirements of the respective regulations are fulfilled.

  Unfortunately, the Swiss legislation also “missed” the opportunity that the proprietor of a geographical mark can oppose the registration of an individual trademark. Especially this second point really relativizes the value and benefit of a geographical mark for its owner. Therewith, the registration of a geographical mark does not really grant more rights than its subject GI.

  Still, there are mainly two reasons to register a geographic trademark:

• First, it really increases transparency as the beneficiaries dispose of a registration in a federal, easy accessible register (see www.swissreg.ch). The protection of the GI therewith becomes very clear and transparent. This is for example not the case for wine appellations in Switzerland which are subject to cantonal registers and therewith not easy to access.
• Secondly, as “trademark” also the geographical trademark shall be subject of the Madrid System. It shall therefore be possible to use a Swiss geographical trademark as basis for an international application. The Swiss trademark Office therefore also assesses the geographic trademark as an instrument to protect GIs abroad, especially in countries where the subject GI is not protected as PDO or PGI.

Which are the benefits for the owner?

The main benefit of the geographical mark is that GI-owners get a registered right, which is – at least in Switzerland – accessible through the trademark register. Therewith, the protection of the GI is in fact more transparent and probably also easier to enforce. People in Switzerland are still more aware of trademark protection than of the protection of GIs.

If the geographical trademark however will really become an instrument to protect GIs abroad, especially in countries where the subject GI is not protected as PDO or PGI, is still very open. This will largely depend on the fact how WIPO and the Madrid-Member states will deal with International applications based on a Swiss geographical trademark.