Court assesses use of opinion poll in OKTOBERFEST-BIER case

The Swiss Federal Administrative Court recently ruled on an appeal by the Munich Breweries Association against a decision of the Federal Institute of Intellectual Property (FIIP) refusing to grant trademark protection for the term "OKTOBERFEST-BIER" with respect to beer in Class 32. The FIIP had held that the sign was not distinctive and needed to be kept freely available under Article 2(a) of the Trademark Act. The Munich Breweries Association (alternatively) claimed that the term "OKTOBERFEST-BIER" had acquired distinctiveness through use and submitted a corresponding opinion poll. In line with the FIIP, the court ruled that the opinion poll was inappropriate to show credibly that the term "OKTOBERFEST-BIER" had acquired distinctiveness through use (B-5169/2011, 17th February 2012).

The court stated that even correctly conducted opinion polls do not absolve the judge from his or her decision-making duty. According to the court – and contrary to some Swiss authors – the fact of acquired distinctiveness through use can not be proven entirely, which leaves room for decision making based on value judgements.

The court established that a sample size of 1,000 net interviews (ie, actually conducted interviews) was sufficient for a representative opinion poll. 

It held that the probative force of an opinion poll mainly depends on the wording of the questions asked. It did not criticise the generally accepted three-step question model:

• Question one: brand awareness.
• Question two: distinctiveness.
• Question three: attribution to a specific company.

However, the court stated that suggestive questions were not allowed and that the first question could prejudice the second – and decisive – question if it already contained a highly descriptive term such as "OKTOBERFEST-BIER". Unfortunately, the court provided no guidance as to how to ask the brand awareness question without using the term concerned.

Finally, the court addressed the percentage rate necessary for proof of acquired distinctiveness through use. It referred to two Federal Supreme Court decisions requiring “more than two-thirds” and “more than 50%” of the interviewees, respectively, who regarded the sign as distinctive, but held that there was no generally accepted percentage rate for proof of acquired distinctiveness through use. According to the court, the results of the opinion poll in the case at hand showed that only 6.1% of all interviewees attributed the term "OKTOBERFEST-BIER" to one or several companies in the environment of the Munich Breweries Association. If the answers of all the interviewees who answered “Munich” were added to the answers which attributed the sign to the environment of the Munich Breweries Association, a percentage rate of 37.2% would result. The court decided that this rate would not be sufficient either, and therefore dismissed the appeal.

The court left open the question of whether there was an absolute need – insuperable by the proof of acquired distinctiveness through use – to keep the term "OKTOBERFEST-BIER" freely available.