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AIPPI

conclusively decided by the Swiss courts. However, Swiss doctrine tends to acknowledge such a use as use “as a mark”, since also in such cases consum- ers usually perceive the mark not only as a decorative element or a reference to the character or event represented by the mark, but also as a sign distin- guishing the marked products from others. 4. What degree of use is required for maintaining protection? Is token use sufficient? Is mini- mal use sufficient? The degree of use required for main- taining trademark protection is not de- fined by the TMA. As a general rule the necessary degree of use shall allow to differentiate between genuine use which maintains trademark protection and token use which is not sufficient for maintaining protection; however, min- imal use is sufficient (BGE 81 II 287, “Kompass”). In practice a higher degree of use is required for consumer goods and mass products than for luxury goods and customized products. According to the long standing case law of the Federal Supreme Court already a marginal turnover is suffi- cient for maintaining protection if the trademark owner has the genuine will to satisfy each demand of the market (BGE 102 II 111, “Silva II ” ). Thus, gen- uine use was accepted by the Federal Supreme Court in the following cases: – delivery of three refrigerators within one year (BGE 60 II 164, “Frigomax“; decision of 1934); sale of 21 reference books with limited circle of potential buyers within three years (BGE 81 II 287, “Kompass”; decision of 1955); one single delivery of 24 bottles of port wine within three years (BGE 102 II 111, “Silva II“; decision of 1976). – –

In contrast to case law of the Fed- eral Supreme Court dating back to the 1970s, the latest case law of the Swiss Federal Appellate Commission of Intel- lectual Property (the so called “REKO” which later became the Swiss Federal Administrative Court, “SFAC”) seems to demand a higher degree of market cultivation for the distinction between genuine and token use, although these decisions refer to administrative op- position proceedings where already prima facie evidence of use is suffi- cient. In recent years genuine use was denied in the following cases: – sale of 115 bottles of white wine within one year (REKO of 15 May 2000, sic! 2001, 427, “Heidi /Heidi- Wii”); delivery of 14 low-ranged clothes on the basis of five orders (REKO of 26 October 2001, sic! 2002, 53, “Express /Express Clothing”); sale of two or eventually four mid- dle-ranged watches within three years (REKO of 17 September 2003, sic! 2004, 106, “Seiko Ri- voli /R Rivoli”); presentation of three relevant ac- counts of EUR 202.95, 145.49 and 103.67 (REKO of 20 June 2005, sic! 2005, 759, “Proline /Profiline Berufsbekleidung”); insurance of 13 or 8 external em- ployees by pension fund (REKO of 14 December 2005, sic! 2006, 180, “Integra /Ökk Integra”); three deliveries of bread and flour to a single employee within 5 years (REKO of 2 November 2005, sic!, 2006, 183, “Banette /Panetta”); single use of a trademark for the first issue of a socker magazine of 800 copies (REKO of 24May 2006, sic! 2007, 41, “Okay /Okay”). However, genuine use was ac- – – – – – –

and services claimed; (3) in trade; (4) in or for export from Switzerland; (5) and that, considering the usual and commercially reasonable practices in the sector concerned, can be regarded as genuine use (See, e.g. SFAC of 30May 2008, No. B2683/2007, consid. 5.1, “Solvay /Solvexx”). 3. Is use “as a mark” required for maintaining protection? Is use as a business name, use in ad- vertising or use on the Internet sufficient? Is use of a mark in merchandising genuine use for the original products? (For in- stance, is use of the movie title Startrek, registered for cloth- ing and used on the front of a T- Shirt, genuine use of the mark for clothing?) Yes, only the use of the trademark “as a mark” suffices for maintaining protec- tion. Required in this respect is the use of the trademark on or in connection with the goods and services for which it is claimed. Decisive is that the mark is used in a manner in which the con- sumers recognise it as a distinctive ref- erence to specific goods or services (BGer of 14 Octobre 2008, No. 4A.253/2008, consid. 2.1, “Gallup”). Use of the trademark as a busi- ness or company name is not sufficient in this respect (BGer of 25 September 2008, No. 4A.309/2008, consid. 6.1, “Eva Astrologia”; BGE 88 II 32 ff., “Au Bûcheron”). To which extent use on the Internet can be considered as use “as a mark” is not entirely clear. While it appears acknowledged that a clearly product related use of the mark on an Internet website suffices, it is unlikely that the use as an Internet domain name (irrespective of the contents of the related website) does. Whether the use of a mark in mer- chandising constitutes genuine use for the original products has not yet been

cepted in the following cases: –

a quarterly periodical of 5000 cop- ies within two years (REKO of 24

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