Changed conditions regarding the possibility to register “geographical” trademarks

As you might have heard before, a fundamental requirement for registering a trademark is that the trademark is distinctive, meaning that it must have the ability of distinguishing the goods or services provided from the goods and services of others.

The Swedish Trademark Act holds that a trademark might lack distinctiveness inter alia when it suggests the geographical origin of the goods or services. Accordingly, Swedish case law has historically pretty consistently refused registration for geographical terms, arguing that geographical trademarks could not be inherently distinctive, the rationale being that such expressions, along with other descriptive terms, should be available for each and everyone to use in their business. Some examples of these non-permissive rulings from the Swedish Court of Patent Appeals are ÖRESUNDS KRAFT (case no. 04-085) and ROSLAGSSNAPS (case no. 05-358).

Previously, the way for an applicant to be granted registration for a “geographical” trademark was to argue for acquired distinctiveness, thus that a sufficiently large amount of the relevant market was aware of the trademark and linked it to the goods or services in question. Such examples of cases where the applicant did manage to convince the Court of Patent Appeals are VÄSTERBOTTENOST (case no. 02-100), KOPPARBERGS (case no. 00-505) and KIVIKS (case no. 98-104).

However, as implied by the title of this blog post, the rules of the game have changed.

In December 2011, the Court of Patent Appeals, made a U-turn in NACKA FORUM (case no. 10-292), a “landmark case” where registration was granted for NACKA FORUM, despite the fact that “Nacka” indeed is a geographical location, close to Stockholm.

Then what reasoning did the Court of Patent Appeals apply?

The Court of Patent Appeals based its judgment in NACKA FORUM on a case from the European Court of Justice, WINDSURFING CHIEMSEE (case no. C-108/97 and C-109-97), arguing that trademark registration for a geographical indication should not be denied solely on the basis that the goods or services originate from the geographical location in question. The Court of Patent Appeals continued stating that the need for geographical locations being available for everyone to use in commerce only makes itself reminded in cases where the geographical location is “associated with a certain level of quality or other properties, or when such a connection, based on a particular circumstance, is likely to occur in the future”.

After having made these principle statements, the Court of Patent Appeals rounded off by concluding that Nacka, a fairly generic suburb of the Swedish capital (the author’s remark), was not a geographical location linked with quality or other properties for the goods and services provided, and that such associations were not likely to occur in the future.

After NACKA FORUM, a number of similar judgments from the Court of Patent Appeals have followed, e.g. KARLSTADS STADSNÄT (10-282), DANDERYDS CENTRUM (11-031) and AVESTA WELDING (12-026), all of them permitting registration.

However, a total turnabout from previous case law has not taken place. In some cases, the Court of Patent Appeals has still been reluctant in granting registration. In ØRESUNDSTÅG (10-023) the Board of Appeal denied registration, not on the basis of geographical origin, but on a discussion around the mark “as a whole” not being distinctive, due to the circumstance that the mark merely described the goods and services in question (“tåg”, as in train transportation) and their origin (“Øresund”, a strait located between Sweden and Denmark). MALMÖ AIRPORT (case no. 12-037) is another case where registration was refused by the Court of Patent Appeals, using a similar reasoning.

So what are the effects of NACKA FORUM?

The legal effect of NACKA FORUM is that a trademark consisting of a geographical term can indeed in some cases possess inherent distinctiveness, and thus be possible to register without having to prove acquired distinctiveness. From a right holder’s perspective, this progress can be seen as favourable, since the outlooks for protection of their trademarks are enhanced and cheapened. The other side of the coin though is the question of third party interests; what is the actual “scope of protection” for these geographical trademark registrations? How “close” can you get without having to risk accusations of trademark infringement? For example, will NACKA FORUM have to accept a competitor’s usage of e.g.  NACKA SUPER FORUM? In these situations there are no straight yes or no. How these assessments should be made is ultimately a question for the Courts to decide upon.

Anders Sparlund, Associate

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