Obvious falseness or wise ingenuity?26 January 2016
A US company MD Science Lab filed a trade mark application number 2012718142 for Swiss Navy in respect of goods in class 5 (pharmaceuticals). The patent office refused the registration because the claimed designation includes the word element Swiss. In the opinion of the patent office the word "swiss" would be confusing with regard to the location of the applicant and place of production of goods because the applicant is a US resident. For the sake of justice it should be noted that not so many Russians would understand that this Latin word combination means.
The applicant appealed the decision of the patent office. However the Board of Appeal upheld the decision of the examiner. It explained that the claimed designation includes an adjective "swiss" pointing to a certain country and a noun "navy". Hence, given that the applicant is a company located in the US, the conclusion made by the examiner that the claimed designation may mislead with respect to the location of the applicant and place of production of goods should be recognised as well grounded.
The Board of Appeals rejected the arguments of the applicant who argued that false associations which might arise among the consumers would not be misleading because Switzerland is situated in the centre of Europe, it is a mountainous country and everybody knows that it does not have access to seas and cannot have a navy. The applicant also argued that the two words cannot be viewed separately and that this word combination should be understood as "Swiss navy blue". The false indications pointed out by the examiner and the Board of Appeals are not plausible.
One may wonder if the Board of Appeals would accept such registrations as "Martian Navy" or "Lunar Navy". It is common knowledge that at least the Moon has "seas".
The Board of Appeals continued to state that falseness of the word element "swiss" is obvious. As to the probability of associations which may have an average Russian consumer he may not possess profound knowledge about the structure of government bodies of Switzerland and it is probable that he may believe that Switzerland may have a maritime body and believe that the designation Swiss Navy is authentic.
In rejecting the application, the Board of Appeals circumstantially offended the level of education of Russian people believing that the education of Russians is so poor. For the sake of justice it should be pointed out that confusing situations may happen in any country. Thus, back in 1914 the US President invited the non-existent Swiss Navy to attend the celebration on the occasion of opening the Panama Canal (the invitation was recalled in time) or, quite recently, a US spokesperson promised to send the US Navy to the shores of Belorussia which is situated 1,000 miles from the sea.
Anyway, the probability of confusion in certain situations should not be a bar to registration.