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A Mexican watch manufacturer has named its trademark NIVADA swiss. The Swiss Watch Association views this as an infringement of its collective trademark “Swiss” and is fighting back with an opposition. How far does the protection of the collective trademark extend when the earlier trademark is fully contained within the later trademark?
A red watch brand with Swiss appeal
On January 18, 2024, the Mexican company HOLZER Y CIA., S.A. DE C.V. filed an application for a figurative mark with the European Union Intellectual Property Office (EUIPO).
The trademark was registered, among other things, for horological and chronometric instruments, as well as for jewelry.
The Fédération de l’Industrie Horlogère Suisse (FH), the umbrella organization for the Swiss watch industry, filed an objection to this. The FH is the owner of the collective mark “Swiss” for horological and chronometric instruments, watches, and their parts and accessories. A collective mark is not owned by a single company but by an association and may only be used by its members.
The Opposition Division of the EUIPO dismissed the opposition in its entirety by decision dated October 20, 2025. It found that there was no likelihood of confusion, as there was insufficient similarity between the signs.
Complete Reproduction Versus a Dominant Element
At the heart of the dispute was a long-standing issue of the Trademark Law. The question of whether the complete incorporation of an earlier mark, in and of itself, already gives rise to a likelihood of confusion. The Federal Institute of Intellectual Property (FH) based its appeal on a single argument: if an earlier trademark is fully incorporated into a later trademark, this indicates an average degree of similarity between the trademarks, regardless of how small the incorporated element may be. The applicant is not a member of the association. It has no connection to Switzerland and deliberately uses the term “swiss” to capitalize on the reputation of the Swiss watch industry. Any registration of a mark that fully incorporates the collective mark therefore calls into question the very purpose of collective mark protection.
The applicant countered that the assessment of likelihood of confusion, even in the case of collective marks, is based exclusively on the general criteria, and that the special function of a collective mark does not alter this. Since “Swiss” has only weak distinctiveness for the goods in question and the element “NIVADA” dominates the overall impression of the contested mark, the marks differ structurally so significantly that confusion is ruled out.
Board of Appeals upholds the rejection
The appeal was unsuccessful; the Board of Appeals fully upheld the Office’s decision in its ruling of June 29, 2026—Ref. No. R 2448/2025-4.
Why doesn’t a collective mark automatically provide stronger protection?
The Board clarified that a collective mark does not enjoy a broader scope of protection than an ordinary individual mark. Although EU trademark law would, in exceptional cases, permit the registration of a purely geographically descriptive sign such as “Swiss” as a collective mark, However, this exception would not relieve the association of the obligation to ensure that its trademark possesses sufficient distinctiveness so that consumers can actually distinguish its members’ goods from those of other suppliers.
In doing so, the Chamber even departed from the Opposition Division’s ruling in favor of the University of Applied Sciences and, unlike the Opposition Division, assumed that “Swiss” would be understood throughout the EU, particularly in connection with watches. Nevertheless, the term would still be considered to have only weak distinctiveness because it primarily refers to geographical origin and the associated perception of quality, rather than to a specific company.
To what extent does “NIVADA” shape the overall impression?
The decisive factor in the comparison of the trademarks was which elements of the challenged trademark contributed to the overall impression. In the Chamber’s view, “NIVADA” is the element with the greatest distinctive character and, at the same time, the dominant element, if only because of its size, central position, and bold typeface. The word “swiss,” on the other hand, plays only a subordinate role due to its small size, its position below “NIVADA,” and its weak distinctiveness for watches.
On this basis, the marks would be only slightly similar visually and conceptually; phonetically, depending on the pronunciation of “swiss,” they would be dissimilar or, again, only slightly similar. The complete adoption of the collective mark would not automatically lead to a higher degree of similarity, because an element with weak distinctiveness in a composite mark would not retain an independent distinctive character.
Given its low distinctiveness, the earlier trademark does not retain an independent distinctive character in the contested trademark.
What options does the FH have besides trademark law?
The Board emphasized that any potential unauthorized use of the collective mark by the applicant would not be the subject of opposition proceedings. The FH would remain free to take action against such use by other means, such as filing an infringement lawsuit in national courts or filing a petition for invalidation on the grounds of bad-faith filing, absolute grounds for refusal, or misleading use after registration.
How far does the protection of the collective mark extend in practice?
This decision is part of a series of cases in which collective marks with a geographical reference are granted only limited protection. The European Court of Justice had already clarified in the case involving the Cypriot collective mark “Halloumi” versus the sign “BBQLOUMI” that the special function of a collective mark does not alter the general standard of examination and that a narrow scope of protection remains the rule in cases of low distinctiveness. Even in the case of composite marks, the Board confirms a pattern that can be observed time and again: namely, that offices and courts first break down composite marks into their constituent elements to determine which element contributes to the overall impression.
For associations seeking to protect geographic indications as collective marks, this represents a structural weakness. The economic value of a designation such as “Swiss” lies precisely in its descriptive power, yet this power works to its disadvantage in a comparison of trademarks. The more well-known and descriptive a term is, the more difficult it is to defend against third-party applications, as long as those applications emphasize their own distinctive element.
Conclusion
Anyone who creates a collective mark from a descriptive geographic term must accept that third parties may incorporate that term into their own distinctive mark, as long as their own element dominates the overall impression.
It remains to be seen whether FH can assert claims for infringement, if applicable. In addition, claims under competition law may also be considered, as the designation “SWISS” is likely to be understood as indicating Swiss origin. If manufacturers that are not based in Switzerland or do not manufacture there use such a designation, this could constitute a misleading representation.
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