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Original decision in German. 4A_361/2020 08.03.2021 – Schweizerisches Bundesgericht (bger.ch)
Translated with www.DeepL.com/Translator (free version)*
Judgment of March 8, 2021
- Civil division
Federal Judge Hohl, President,
Federal Judges Kiss, Niquille,
Federal Judge Rüedi,
Federal Judge May Canellas,
Clerk of the Court Stähle.
Parties to the proceedings
Swiss Federal Institute of Intellectual Property IGE, Appellant,
Swiss Re Ltd,
represented by Markus Kaiser, Dr. Michael Noth and Lea Weber, attorneys at law,
Trademark law, indication of origin for services,
Appeal against the judgment of the Federal Administrative Court, Division II, of May 25, 2020 (B-5011/2018).
Facts of the case:
By submission of April 19, 2017, Swiss Re Ltd (Respondent) requested the Swiss Federal Institute of Intellectual Property (IPI; Appellant) to register the sign “SWISS RE – WE MAKE THE WORLD MORE RESILIENT” in the Swiss Trademark Register, for the following services in Class 36: “Money transactions; real estate; finance; insurance” (Trademark Registration Application No. 54931/2017).
By letter dated May 24, 2017, the IPI objected to the sign applied for, inter alia, on the grounds that it created expectations of origin and was therefore misleading. Registration was only possible if the list of services was restricted to services of Swiss origin (specifically with the addition: “all aforementioned services of Swiss origin”). Swiss Re Ltd contested a risk of misleading.
By order dated June 29, 2018, the IPI rejected the trademark registration application.
Swiss Re Ltd challenged this order before the Federal Administrative Court. By judgment of May 25, 2020, the latter upheld the appeal and ordered the IPI to allow the sign “SWISS RE – WE MAKE THE WORLD MORE RESILIENT” with the annotation “SWISS RE: partially enforced trademark” for “money business; real estate business; financial business; insurance business” in Class 36 “without restriction of the services mentioned to Swiss origin” for registration in the trademark register.
With its appeal in civil matters, the IGE demands that the judgment of the Federal Administrative Court be set aside and that the trademark registration application be rejected.
The Federal Administrative Court waived its right to be heard. The respondent requested that the appeal be dismissed. The IPI replied, whereupon the respondent filed a duplicate.
By presidential order of October 1, 2020, the appeal was granted suspensive effect due to lack of opposition.
In the present registry case, the appeal in civil matters is the admissible legal remedy pursuant to Art. 72 para. 2 lit. b no. 2 FSCA. As the lower court, the Federal Administrative Court has ruled (see Art. 75 para. 1 FSCA). The decision was not issued in the context of the opposition proceedings (cf. Art. 73 FSCA). The contested decision concludes the proceedings concerning the trademark registration application No. 54931/2017 and accordingly constitutes a final decision (cf. Art. 90 FSCA). The amount in dispute required for an appeal in civil matters has been reached (cf. Art. 74 para. 1 lit. b FSCA; see BGE 133 III 490 E. 3) and the time limit for appeal has also been complied with (cf. Art. 100 para. 1 FSCA).
According to Art. 76 para. 2 FSCA, the right of appeal, namely in trademark registration matters (Art. 72 para. 2 lit. b no. 2 FSCA), is also available to the departments of the Confederation or, to the extent provided by federal law, to the departments subordinate to them, if the contested decision may violate federal legislation in their area of responsibility. Article 29(3) of the Ordinance of 17 November 1999 on the Organization of the Federal Department of Justice and Police (SR 172.213.1) provides that the IPI is entitled to appeal to the Federal Supreme Court in its area of competence. The registration of trademarks is within the scope of competence of the IPI (Article 2(1)(b) of the Federal Law of March 24, 1995, on the Statute and Functions of the Swiss Federal Institute of Intellectual Property [SR 172.010.31]), which is why it is entitled to appeal.
The appeal is to be admitted.
According to Art. 30 para. 2 lit. c MSchG (SR 232.11), the IGE rejects an application for registration if there are absolute grounds for exclusion. According to Art. 2 lit. c MSchG, misleading signs are absolutely excluded from trademark protection.
A sign is misleading, inter alia, if it contains a geographical indication or even consists exclusively of a geographical designation and thus misleads the addressees into believing that the goods or services originate from the country or place to which the indication refers, although this is not the case in reality (BGE 135 III 416 E. 2.1 p. 418; 132 III 770 E. 2.1 p. 772). The danger of misleading is to be assessed in principle with regard to the specifically claimed goods and services (see judgments 4A_528/2013 of March 21, 2014 E. 5.1, not published in: BGE 140 III 109; 4A_6/2013 of April 16, 2013 E. 3.2.3).
Indications of source are direct or indirect indications of the geographical origin of goods or services, including indications of the quality or characteristics associated with the origin (Art. 47 para. 1 MSchG).
Geographical names and signs which are not understood by the relevant public as an indication of a specific origin of the goods or services are not considered indications of origin in this sense (Art. 47 para. 2 MSchG). This is the case, in particular, if the geographical indication is unknown to the domestic trademark addressees, has a recognizable fanciful character, obviously cannot be considered as a place of production, manufacture or trade, is recognized as a type or generic designation or has become established in the trade as a sign for a certain company (BGE 135 III 416 E. 2.6.1-2.6.6; 128 III 454 E. 2.1.1-2.1.6).
Art. 47 para. 3 MSchG prohibits in particular the use of incorrect indications of source (lit. a) and of trademarks in connection with goods or services of foreign origin if this results in a risk of deception (lit. c). According to case law, such inaccurate or deceptive indications of origin are in principle likely to create a risk of deception within the meaning of Art. 2 lit. c MSchG (BGE 135 III 416 E. 2.2 and 2.4 at the end; judgment 4A_357/2015 of December 4, 2015 E. 4.2).
2.3 The practice in this context is strict in two directions:
On the one hand, with regard to the “rule of doubt”: since the inability to protect a registered trademark can be asserted in civil proceedings by way of counterclaim or plea, the IPI must in principle register a trademark in cases of doubt and leave the final decision to the civil judge (e.g., BGE 140 III 297 E. 5.1 p. 306; 135 III 359 E. 2.5.3). In view of the public interests at stake – such as protection of the public from deception – this rule does not apply to the assessment of the risk of misleading statements under Art. 2 lit. c MSchG (BGE 136 III 474 E. 6.5).
On the other hand, the correctness of indications of origin is also examined more strictly in practice than other misleading facts according to Art. 2 lit. c MSchG. In particular, the mere fact that an indication of source can be used in a correct manner does not exclude the risk of deception (see judgment 4A_508/2008 of March 10, 2009 E. 4.3; see also BGE 135 III 416 E. 2.4; EUGEN MARBACH, Markenrecht, in: SIWR Bd. III/1, 2nd ed. 2009, pp. 182 para. 593; STÄDELI/BRAUCHBAR BIRKHÄUSER, in: Basler Kommentar, Markenschutzgesetz, Wappenschutzgesetz, 3rd ed. 2017, n. 286 and 324 on Art. 2 MSchG and also the Guidelines of the IGE in Trademark Matters, edition of January 1, 2019, adapted as of January 1, 2021 [hereinafter: “Guidelines”], para. 5.1 p. 164). On the contrary, according to case law, a sign with a geographical indication of origin is already excluded from trademark protection if it is likely to mislead the customers – with respect to the goods claimed (preceding recital 2. 1); an abstract risk of deception is sufficient (in this respect, the French and Italian versions of the law [“les signes propres à induire en erreur”; “i segni che possono indurre in errore”] are more precise than the German version [“irreführende Zeichen”]). Thus, the absolute ground for exclusion of Art. 2 lit. c MSchG takes effect as soon as there is a possibility that an indication of source is used for products originating from another place (cf. Art. 47 para. 3 MSchG; on the whole, judgment 4A_357/2015 of December 4, 2015 E. 4.2).
It should also be noted that foreseeable future developments may be taken into account in the registration procedure. In contrast, a mere minimal probability that an indication of source could prove to be misleading in the future – for example due to changed circumstances – is not sufficient to establish an absolute ground for exclusion within the meaning of Art. 2 lit. c MSchG on the basis of (potentially) inaccurate expectations of origin; rather, certain elements must speak in favor of this – in accordance with the standard of proof of prima facie evidence – even if it is still to be expected that they will not materialize (see judgment 4A_508/2008 of March 10, 2009 E. 4.2; see also MARBACH, loc. cit, p. 175 f. para. 570).
The Federal Administrative Court found in recital 5 that the sign “SWISS RE – WE MAKE THE WORLD MORE RESILIENT” would in principle be understood by the relevant public as a geographical indication and would lead them to believe that the services in question in class 36 originated in Switzerland.
Accordingly, it examined in recital 6 whether this indication of origin was incorrect and thus misleading. The lower court answered in the negative: The indication was correct, even if the list of services was not limited to services of Swiss origin. Therefore, the sign had to be registered as applied for.
In recital 6, the IPI finds an infringement of Art. 30(2)(c) in conjunction with Art. 2(c) and Art. 47 MSchG. The danger of misleading the public cannot be countered other than by an explicit geographical restriction of the claimed services (to those of Swiss origin) in the trademark register.
The respondent agrees with recital 6.
However, in the sense of a contingent position, it objects to recital 5 and argues that the filed sign is not an indication of origin, inter alia because it is not understood by the relevant public as a geographical designation, but as an indication of its company. This argument would only have to be addressed if recital 6 of the lower court did not stand up to scrutiny by the Federal Supreme Court.
With the Federal Administrative Court’s consideration 5, it must be assumed for the time being that the sign “SWISS RE – WE MAKE THE WORLD MORE RESILIENT” constitutes an indication of the Swiss origin of the respondent’s services. It has to be examined whether this indication of origin (if it is an indication of origin) is correct.
The respondent seeks protection for various services (in class 36).
According to Art. 49(1) MSchG, the indication of source of a service is correct if it corresponds to the place of business of the person providing the service (lit. a); and a place of effective management of this person is located in the same country (lit. b). If a parent company fulfills the requirements of paragraph 1 lit. a and if either itself or a subsidiary actually controlled by it and located in the same country fulfills the requirements of paragraph 1 lit. b, the indication of origin is also deemed to apply to the similar services of the foreign subsidiaries and branches of the parent company (Art. 49 para. 2 MSchG; “group privilege”).
The Federal Administrative Court considered that the requirements of Art. 49 para. 1 MSchG were “obviously” fulfilled; the services of the respondent clearly had Swiss origin within the meaning of this provision. By virtue of the express statutory order, the indication of origin in the sign applied for was without further ado correct; consequently, it could not be misleading within the meaning of Art. 2 lit. c MSchG.
The IGE relies on its guidelines, according to which it “normally” requires a restriction of the list of goods and services to the country of origin concerned in the case of Swiss and foreign indications of origin for goods and services (IGE Guidelines, para. 126.96.36.199 p. 194 f.). In the present case, too, such a restriction is necessary; only in this way can the danger of misleading the public be countered, which consists in the fact that the sign in dispute (which indicates a Swiss origin) is used for services of non-Swiss origin. It had been following this practice with regard to goods for a long time; with the entry into force of the “Swissness” law revision on January 1, 2017, it had decided to also make the registration of trademarks for services dependent on a geographical restriction. Since that date, it has no longer allowed trademarks with indications of origin whose list of services was not restricted to the geographical origin in question. With this approach, it was unnecessary to examine whether an indication of origin for services under Art. 49 MSchG was applicable.
The respondent takes the position that the restriction of the claimed services to such “Swiss origin” entails considerable impairments. In addition to problems under priority law, it lists the following disadvantages:
First, the use of international trademarks in a way that preserves rights is excluded, as follows:
If it (the respondent) also wants to have the sign protected internationally via the Madrid system, the international registration is also limited to services of “Swiss origin”, since the scope of protection of the international trademark cannot extend beyond that of the Swiss basic trademark.
For a trademark to remain registered and enforceable, it must actually be used for the registered goods and services. This applies in Switzerland on the basis of Art. 11 et seq. MSchG; similar (or even more restrictive) regulations exist abroad. Each country examines according to its own national law whether the trademark is used in a way that preserves the rights of the country in question.
Now, it is the case that the company operates in numerous countries via subsidiaries (which is even required by insurance supervisory law in many cases). According to Swiss law, the services provided by these foreign Swiss Re subsidiaries are considered to be of Swiss origin pursuant to the new Art. 49 (2) MSchG (“group privilege”). However, there were no (or only very few) other countries with a rule corresponding to Art. 49 para. 2 MSchG. Accordingly, from the perspective of foreign countries, services provided by Swiss Re’s foreign subsidiaries would not have a Swiss origin. Consequently, the use by a foreign Swiss Re subsidiary of a trademark claiming protection only for services of “Swiss origin” would not be legally preserved from the perspective of the foreign country. The trademark would therefore be cancelled due to non-use abroad. As a result, the practice of the IGE excludes Swiss companies which are active abroad through their subsidiaries from the Madrid system.
The restriction demanded by the IGE leads – secondly – to a reduction of the scope of protection of the trademark abroad. Other service providers abroad could argue that the respondent’s trademark is only protected for services with Swiss origin (from the perspective of foreign law, i.e. disregarding Art. 49(2) MSchG), but not for services in the country concerned, which is why there is a reduced similarity of the services and the sign distance that third parties have to observe must be smaller.
Third, the term “Swiss Re” is understood in many countries (and correctly also in Switzerland) as the name of an international group, but not as an indication of origin. By limiting the registration to “services of Swiss origin” (and consequently also limiting the international registration accordingly), the IPI anticipates the decision as to whether there is an indication of origin at all for all Member States of the Madrid System; irrespective of whether the sign “Swiss Re” would be perceived as an indication of origin in the countries concerned.
With the “Swissness” proposal – so the respondent concludes – the legislator wanted to strengthen the protection of the indication of source “Switzerland” and thus the business location “Switzerland”. The practice of the IGE achieves the opposite and makes it more difficult for Swiss companies to obtain trademark protection abroad. In this context, the respondent also draws particular attention to the fact that with its new practice, the IGE enters geographical indications in the trademark register without verifying the correctness of the indication of source within the meaning of Art. 49 MSchG; it only (but always) restricts the list of services. The respondent complains that this has led to the fact that various service marks with the element “Swiss” (albeit with a restriction to services of Swiss origin) are registered in the trademark register, although the companies in question are domiciled abroad and therefore cannot legally use the trademark (because it does not comply with Art. 49 MSchG). The approach of the IGE leads to a “relaxation of the regulations for unauthorized persons and a tightening of the regulations for authorized persons”. This cannot be the intention of the legislator.
The respondent further refers to various trademarks (registered before the change of practice of the IGE) which it had been able to have protected for services without the registration being limited to services of Swiss origin (CH trademarks no. 717011 [SWISS RE], No. 642128 [SWISS RE LIFE CAPITAL], No. 694771 [Swiss Re Institute (fig.)], No. 642452 [SWISS RE CORPORATE SOLUTIONS], No. 2P-411123 [Swiss Re Group (fig.)]).
It is a long-standing practice of the IGE to register trademarks with geographical indications only with an addition in the list of goods, according to which the claimed goods must originate from the country to which the indication of origin refers (see BGE 132 III 770 Facts p. 772). The Federal Supreme Court had the opportunity to comment on this practice and protected it (BGE 132 III 770 [“Colorado”]; judgment 4A_357/2015 of December 4, 2015 [“INDIAN MOTORCYCLE”]; implicitly also in judgment 4A.3/2006 of May 18, 2006 [“Deutsche See”]). The case law is based on the legislative concern to eliminate any seriously contemplated – even if only abstract – risk of misleading (see preceding recitals 2.3 f.). In the registration procedure, the IPI does not have concrete information on the (actual or future) use of the filed sign and in particular on the origin of the goods for which the mark is to be used. For this reason, a risk of deception can be assumed without further ado if an indication of origin is to be registered as a trademark without limiting the list of goods to products with a corresponding origin.
This restriction of the list of goods has two consequences: On the one hand, it has a preventive effect by de facto minimizing the risk of deception. On the other hand, it directly affects the scope of protection of the trademark, as this depends on the goods claimed (cf. Art. 11(1) MSchG); a use of the sign with goods of a different origin does not constitute a right-preserving use and leads to the loss of the trademark right according to Art. 12(1) MSchG (judgment 4A_357/2015 of December 4, 2015 E. 4.2; see further BGE 132 III 770 E. 3.2).
This case law has partly met with criticism in the literature (e.g. in ROLAND VON BÜREN, review of BGE 132 III 770, ZBJV 2007, p. 539). GREGOR BÜHLER, comment on “Colorado (fig.) II”, sic! 2007, p. 204 ff., was also skeptical. He criticized that the case law would lead to undesirable import and distribution barriers. Furthermore, he took up arguments of the (then) Federal Appeals Commission for Intellectual Property, according to which the restriction of the list of goods and services with an indication of origin was contrary to the system. Moreover, no other country restricts the list of goods and services in this way in order to prevent misleading statements regarding the geographical origin. Finally, indications of origin are only of “very limited” use to protect customers from deception. A control only takes place during the filing of the trademark; after registration, the IGE has no possibility to influence the use of the trademark (p. 209 f.). Others – among them in particular employees of the IGE – approve its practice and the case law of the Federal Supreme Court (e.g. FRANZISKA GLOOR, Die Beurteilung der Gefahr der Irreführung über die geografische Herkunft auf der Grundlage eines Erfahrungssatzes, sic! 2011, p. 21; FRAEFEL/MEIER, in: Commentaire romand, Propriété intellectuelle, 2013, N. 141 zu Art. 2 MSchG).
The case law of the Federal Supreme Court, which referred to trademarks, is not challenged by the parties in the present proceedings. In its notice of appeal, the IPI calls upon the Federal Supreme Court to “confirm that this case law […] also applies to services”.
As of January 1, 2017, the “Swissness” bill entered into force. This included, among other things, more precise criteria in Art. 48 et seq. MSchG for determining the origin of goods and services. This was intended to strengthen the protection of the designation “Switzerland”, to promote transparency and to increase legal certainty (Dispatch of 18 November 2009 on the amendment of the Trademark Protection Act and on a Federal Act on the Protection of the Swiss Coat of Arms and other Public Signs [“Swissness” Proposal; hereinafter: Dispatch Swissness], BBl 2009 8535 and 8558 para. 1.4.1). In the parliamentary deliberations, Federal Councillor Sommaruga explicitly referred to the concern that “important service providers such as […] Swiss Re […] could appear as Swiss companies” in two speeches (AB 2012 N 505; AB 2012 S 1148).
In the course of this revision, the Federal Council amended, among other things, the Trademark Protection Ordinance. Thus, in Art. 52o of the Ordinance on the Protection of Trademarks and Indications of Source (MSchV; SR 232.111), it concretized the concept of the “place of effective management”, which is relevant for determining the origin of a service according to Art. 49 para. 1 lit. b MSchG. In this context – namely in the Explanatory Report on the “Swissness” Implementation Law of September 2, 2015 (p. 22 f.) – the IPI announced an “adjustment of the trademark examination practice”. In the case of a trademark registration, the list of goods and services was to be limited “in the future” to services from the corresponding place of origin, in accordance with the previous practice on trademarks approved by the Federal Supreme Court. Subsequently, it adapted its guidelines in this sense (para. 8.6.1 p. 192; para. 188.8.131.52 p. 194 f.). In the article “Les nouvelles Directives en matière de marques de l’Institut Fédéral de la Propriété Intellectuelle” published in the journal sic! 2017 p. 79 ff. it – or its Vice Director ERIC MEIER – confirmed this change (p. 84).
The new practice of the IGE goes too far in this absoluteness, as the Federal Administrative Court has rightly recognized (and in the meantime in another judgment: B-5280/2018 / B-5382/2018 of 25 September 2020 [“Loterie de la Suisse Romande”] E. 9.4.2 and 16):
The restriction of the list of goods to products of Swiss origin is intended to eliminate the risk – even if only abstract – of being misled as to the geographical origin (preceding recital 5.1). However, if there is no risk of deception from the outset, there is no reason to restrict the list of goods or services. This is the case here: As the Federal Administrative Court bindingly found and also the IGE does not seriously dispute, the sign in dispute – respectively the reference to a Swiss origin contained therein (according to the IGE) – fulfills the requirements of Art. 49 para. 1 MSchG: The registered office of the respondent is undisputedly located in Switzerland, as is a place of actual administration. The services offered by it thus originate from Switzerland in terms of trademark law; the indication of origin is correct by definition in Art. 49 (1) MSchG. The sign “SWISS RE – WE MAKE THE WORLD MORE RESILIENT” is therefore – even if it were to be understood as an indication of origin – admissible in the sense of Art. 2 lit. c as well as Art. 47 para. 3 MSchG and is to be registered in the trademark register.
The arguments of the IGE are not able to overturn this result:
The different treatment of trademarks – depending on whether they claim protection for goods or services – is a consequence of the conceptually diverging definitions of origin for goods on the one hand (Art. 48 et seq. MSchG) and services on the other hand (Art. 49 MSchG). The origin of a product is defined in relation to the product: Thus, the origin of a natural product is the place of extraction, harvesting and the like (Art. 48a MSchG); the origin of a foodstuff is the place from which at least 80% of the weight of the raw materials of which the foodstuff is composed comes (Art. 48b MSchG; with exceptions); the origin of another product is the place where at least 60% of the manufacturing costs are incurred (Art. 48c MSchG). Whether the sign is misleading thus depends on the respective goods for which the sign is used. The IPI naturally has no knowledge about these goods at the time of registration; in order to nevertheless eliminate the abstract danger of misleading, the list of goods is limited to goods with Swiss origin (see judgment 4A_357/2015 of December 4, 2015 E. 4.2 and recital 5.1 above). The origin of services, on the other hand, is defined on a company-by-company basis: The place where the service provider has its registered office and is active is taken into account (Art. 49 (1) MSchG). In principle, all services of the depositor have the same place of origin. The danger of misleading can be concretely assessed at the time of registration (and negated in the present case).
The fact that the trademark can be transferred or licensed at a future date (to a person who may not meet the requirements of Art. 49 MSchG), as the IGE objects, does not change anything with the Federal Administrative Court, especially since the IGE has in any case no possibility to influence the use of a trademark once registered (see already BGE 132 III 770 E. 3.2 p. 775 as well as the preceding recital 2.4 on the consideration of future developments). It goes without saying that the registration of an indication of source as a trademark does not change the fact that it may not be used in an inaccurate manner; in particular, the use of a trademark in connection with goods or services of foreign origin is inadmissible if this results in a risk of deception (Art. 47 para. 3 lit. a and c MSchG; such acts are, moreover, punishable by law: Art. 64 MSchG).
The IPI complains about an “increase in the examination effort for the IPI” under the revised Trademark Law. Unlike under the previous law, Art. 49(1)(b) MSchG is (cumulatively) linked to the place of actual administration. This means a “generally higher effort” as well as a “time-consuming assessment of evidence in individual cases”, especially in the case of foreign indications of origin (cf. Art. 49 para. 4 MSchG). According to the IPI, this examination could not be expected of it in trademark registration proceedings; instead, the list of services should always be limited geographically.
The Federal Administrative Court, on the other hand, considered that the examination effort with regard to the criteria specified by the “Swissness” reform does not appear to be fundamentally greater than under the old law. If it is certain that the criteria in Art. 49 (1) MSchG are fulfilled, the sign must be registered in any case. In case of doubt, a restriction of the list of services must be made, which applies in particular to foreign indications of origin. Whether – the lower court concludes with reference to the Message Swissness, BBl 2009 8599 Ziff. 184.108.40.206 – there is sufficient actual administrative activity in Switzerland in the specific case, is to be decided by the court in the case of dispute.
Thus, the Federal Administrative Court has shown a feasible way. The position of the IPI to make the registration of all service marks with indication of origin dependent on a geographical restriction of the list of services as a precautionary measure and without examination, even if the indication of origin is correct and there is no relevant risk of misleading, is too undifferentiated. It also cannot be justified by the concern to avoid excessive examination efforts.
It is true that the IGE fears an “inconsistent register” if “in the case of trademarks with indications of origin, the services would not always be geographically restricted, but only in individual cases”. This circumstance is a consequence of the fact that certain signs – such as the present one – are not deceptive, since they are accurate, while in the case of others the risk of deception with respect to the goods and services claimed can only be countered by restricting the list of goods and services. In how far this should affect “legal equality and legal certainty” is not recognizable, contrary to the IPI.
Whether services in general have a less close connection to local conditions than goods, as assumed by the lower court and the respondent with the doctrine (PHILIPPE GILLIÉRON, in: Commentaire romand, Propriété intellectuelle, 2013, N. 3 zu Art. 49 MSchG; SIMON HOLZER, in: Noth/Bühler/ Thouvenin [ed. ], Markenschutzgesetz [MSchG], 2nd ed. 2017, n. 7 on Art. 49 MSchG; ALEXANDER PFISTER, in: Basler Kommentar, Markenschutzgesetz, Wappenschutzgesetz, 3rd ed. 2017, n. 4 on Art. 49 MSchG; cf. also Botschaft vom 21. November 1990 zu einem Bundesgesetz über den Schutz von Marken und Herkunftsangaben, BBl 1991 39 f. No. 223; in tendency also judgment 4A_434/2009 of November 30, 2009 E. 3.2), but which the IPI disputes, can be left open against this background.
The conclusion of the lower court that the sign “SWISS RE – WE MAKE THE WORLD MORE RESILIENT” is not misleading with regard to the services claimed and for this reason is to be granted unrestricted trademark protection is not objectionable according to the above. It rightly instructed the IGE to register the sign in the trademark register without any geographical limitation of the list of services.
With this result, the (contingent) arguments of the respondent need not be examined, with which it claims that the sign “SWISS RE – WE MAKE THE WORLD MORE RESILIENT” does not constitute an indication of origin within the meaning of Art. 47 et seq. MSchG.
The appeal must be dismissed. The IGE is not to be ordered to pay any court costs (cf. Art. 66 para. 4 BGG). On the other hand, it has to pay compensation to the respondent for the proceedings before the Federal Supreme Court (cf. Art. 68 para. 2 Federal Supreme Court Act).
Accordingly, the Federal Supreme Court finds:
The appeal is dismissed.
No court costs shall be charged.
The complainant shall compensate the respondent for the federal court proceedings with CHF 7,000.
This judgment shall be communicated in writing to the parties and to the Federal Administrative Court, Division II.
Lausanne, March 8, 2021
On behalf of the I. Civil Law Division
of the Swiss Federal Supreme Court
The President: Hohl
The Clerk: Stähle
*NOT AN OFFICIAL TRANSLATION. PUBLISHED FOR INFORMATIVE PURPOSES ONLY.