Swissness and geographical trade marks
The new ‘Swissness’ legislation foresees, among others, a new central register for so-called geographical marks.
Stefan Hubacher is a Partner at Furher Marbach in Switzerland who specialises in trade mark, geographical indications and design law.
What is a Geographical mark and what can be registered?
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 1 January 2017 in connection with the so-called Swissness legislation.
The new geographical mark provides for the possibility of registering designations of origin (e.g. “Valais Raclette” or “Gruyère” for cheese), geographical indications (“PDO/PGI”), wine designations (e.g. “Epesses” in the canton of Vaud) and indications of source that are the subject of a Federal Council ordinance (e.g. for watches) or an equivalent foreign regulation as a “trade mark” in the Swiss trademark register.
In contrast to other types of trade mark, a geographical mark can only be registered by a representative group.
Why register a Geographical mark?
A geographical mark has several particularities when compared to other types of trade marks. One essential difference is that – although it is registered in the trade mark register as a “trade mark” – 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 – in the same way as its GI – be used by any person if the requirements of the respective regulations are fulfilled.
Unfortunately, the Swiss legislation also “missed” the opportunity for the proprietor of a geographical mark to be able to oppose the registration of other types of trade mark. This second point reduces the value and benefit of a geographical mark for its owner as the registration of a geographical mark does not really grant more rights than its respective GI.
Still, there are two main reasons for applying to register a geographical trade mark:
- It increases visibility and transparency of the GI as the rights owner holds a registration in a Federal, easily accessible register (see swissreg.ch). Prior to this option, GIs were not visible; for example, wine appellations in Switzerland are subject to cantonal registers which are not easy to access.
- The Swiss geographical trade mark shall be subject to the Madrid System so it will be possible to use the mark as a basis for an international application. The Swiss trade mark Office therefore also regards the geographical trade mark as an instrument to protect GIs abroad, especially in countries where the subject GI is not protected as PDO or PGI.
What 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 trade mark register. Therefore, the protection of the GI is more transparent and probably also easier to enforce. People in Switzerland are still more aware of trade mark protection than of the protection of GIs.
However whether the geographical trade mark 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 questionable. This will largely depend on how WIPO and the Madrid-Member states deal with international applications based on a Swiss geographical trade mark.