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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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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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