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The requirement maintaining protection (Q 218) Report of Swiss Group *

Questions 1. Is genuine use a requirement for maintaining protection? The term “genuine use” is not defined under Swiss substantive trademark law and has therefore no specific meaning. On the other hand it is a recognized concept under Swiss law that the valid- ity of a mark must be maintained by use. Interestingly, the Swiss Trademark Act (“TMA”) only provides for very few con- crete parameters as regarding the kind of use which is required and regarded as sufficient to maintain the rights that vest in a registered mark. Thus, the con- crete parameters of quality or degree of use were developed by Swiss scholars and jurisprudence over the years and resulted in the doctrine of “rechtser­ haltender Gebrauch” or “use maintain- ing the mark”. The requirement of “genuine use” (or rather “serious use” as referred to in Swiss jurisprudence) is only one element of the above doctrine. Thus, any reference to the term “genu- ine use” in this paper must be under- stood in the broad framework of the Swiss doctrine of “use maintaining the mark” as further explained in reply to the questions below. In this sense, according to Arti- cle 11 Paragraph 1 of the TMA “a trade- mark shall enjoy protection to the ex-

tent that it is used in connection with the goods and services for which it is claimed.” This means that genuine use is, in fact, a requirement for maintain- ing protection in Switzerland, but, in a strict sense, it is not a statutory duty, but only an incidental obligation (the nonfulfilment of which may be of det- riment in relation to third parties but will not expose the trademark owner to automatic legal consequences: K. Bürgi Locatelli , Der rechtserhaltende Markengebrauch in der Schweiz, Bern 2008, 2 f.). What is the purpose of requiring gen- uine use? Is it to keep the register uncluttered and to thereby allow for new proprietors to make use of a “limited” supply of possible marks? Is the purpose of requiring genuine use to protect consumers from confusion as to the source of origin of the goods or services? Or are there multiple purposes? Swiss literature usually points to three important purposes of requiring genu- ine use: – First, such requirement is neces- sary in order to have trademarks cancelled that are formally regis- tered but not in use after a reason- able grace period (e.g. trademarks with a wide scope of protection for which use was originally intended, but that are, eventually, not or only partially used) and, as a conse- quence, unjustifiably block com- petitors who wish to enter the

market with new signs ( L. David , Markenschutzgesetz, Muster- und Modellgesetz, 2. Aufl., Basel 1999, MSchG 11 N 1; Ch. Willi , Mar­ kenschutzgesetz, Zürich 2001, MSchG 11 N 1; E. Marbach , SIWR III/1, Bern 2009, N 1265 f.; E. Meier , L’obligation d’usage en droit des marques, Genf 2005, 7 ff.; Bürgi Locatelli , 1). Second, in line with this reasoning, Swiss literature also points out that requiring genuine use is nec- essary to ensure that trademarks fulfill their core legal purpose – which is to distinguish goods and/ or services of one enterprise from those of other enterprises in the marketplace – and are not put on file for merely defensive and/or obstructive ends which would not justify granting monopoly rights either ( Willi , MSchG1N1; Meier , 8 f.; Marbach , N 1287). Finally, trying to reduce the number of trademarks and trade- mark conflicts is not often cited in Swiss literature as one of the main purposes of requiring genuine use, but may also be considered in this context as a desired side effect ( Meier , 10 f.). 2. What constitutes genuine use of a trademark? According to the definitions used by Swiss courts and scholars, genuine use requires a use of the trademark (1) as a mark; (2) in connection with the goods – –

* Members of the working group: Peter Widmer (chair), Cyrill Rieder (secretary), David Aschmann, Marco Bundi, Gallus Joller, Stefan Keehnen, Reinhard Oertli, Christian Rohner, Silvana Schweri, Franziska Strebel Preiswerk, Markus Wang.

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