Can you trade mark fondue?

The answer is a clear no if you want to protect the trade mark for cheese. ‘Fondue’ is a specialist term that is descriptive if it’s used in relation to cheese because cheese is an ingredient in fondue. However, the word ‘fondue’ is unproblematic if it’s used in connection with goods or services that have nothing directly to do with fondue, for example clothing, photocopiers or transport services.

Truffle fondue is commonly available on the Swiss market. ‘Truffle’ just describes an ingredient in the fondue so it doesn’t give the sign any distinctiveness. The word therefore has to remain free for all competitors and can’t be monopolised. The name ‘Karl’s Cheese Fondue’, on the other hand, could be registered for cheese because Karl is a first name, which means that the customer would clearly see it as a brand and not just a generic name in a combination of words.

Before you file a trade mark application, you should always check if there are already similar entries in the trade mark database. The IPI doesn’t check whether identical or similar signs exist. It checks whether a sign fulfils the requirements for protection. If a similar or identical trade mark already exists for ‘Karl’s Cheese Fondue’, the owner of the earlier trade mark can file an opposition with the IPI within three months of its publication in Swissreg or bring an action before an ordinary court at any time.

While dunking bread in the melted cheese, the friends continue their conversation. Trade mark law and fondue – a more complex pairing than you would think.

Trade mark protection is limited to one territory, so a trade mark registered in Switzerland is only protected here. If you wanted to sell abroad, you’d have to think about applying for protection outside of Switzerland. If your trade mark is already protected in Switzerland, you can extend protection to other countries via the IPI through an international procedure. Your IP protection strategy will determine what countries it makes sense to apply for.

No. An AOP (‘appellation d’origine protégée’) is a protected designation of origin that guarantees the geographical origin and quality of an agricultural product – for example Gruyère or Sbrinz cheese. Fondue, on the other hand, is a dish and is not tied to a defined area or a strictly regulated manufacturing process, so it can’t have its own AOP. Even if you use cheese with an AOP, the dish doesn’t become an AOP product: the designation only applies to the individual cheeses.

Their bellies are full and the fondue pot is empty, but the discussion rolls on – it turns out trade mark protection is a fascinating conversation topic for a fondue dinner party.