This is one of those issues that never seem to get resolved! In Western countries, most of the laws on trademarks clearly state that geographic names can be considered as valid trademarks.

Yet, trademarks are constantly rejected by IP offices on the grounds that they infringe the rights of local authorities, or that they lack distinctiveness because the city to which they refer is known to the relevant population, or that they can cause deception!

This is exactly what happened to the well-known children’s clothing trademark, « GAP », in Switzerland:

Why? Because the Swiss Industrial Property Office decided that this trademark referred to the French town of Gap, and refused its registration for products in class 28:

With its 40,000 inhabitants, Gap is one of stages of the Tour de France and is thus well-known to the Swiss inhabitants.

The Office’s arguments were « irrefutable »: not only is the trademark a direct indication of origin, but it also causes deception over products that do not come from the Gap region!

The good news is that after fierce battles on the matter, the GAP company was successful in convincing the Federal Administrative Court that:

– the town of Gap was not known to the entire Swiss population;

– the town of Gap was not known as an industrial town;

– the word « gap » could be construed in different ways (especially in terms of its English meaning);

– the trademark has achieved a certain distinctiveness as a result of its use.

This decision, in line with previous cases in Switzerland (Bellagio, Park Avenue, Victoria), clearly demonstrates that:

–         the choice of a geographic name as a trademark should be a well-informed one;

– having one’s rights prevail often means having to fight to the very end.

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