Switzerland
Suisse
Schweiz
Report Q195
in the name of the Swiss Group
by Peter WIDMER, Lara DORIGO, Donatella FIALA,
Christoph GASSER, Urs HESS–ODONI, Gallus JOLLER and Roger STAUB
Limitations of the Trademark Protection
Questions
Note: the following topics are not to be covered in the Group answers:
–
Exhaustion
–
Limitations on trademark rights by competition law
–
Limitations on trademark rights by the right to freedom of expression
–
Comparative advertising
–
Acquiescence.
Abstract
Swiss trademark law provides for the following statutory limits on the effects of a registered
trademark:
a)
non–use following expiry of the grace period and/or non–use;
b)
prior user right/defence;
c)
the right to reproduce trademarks in dictionaries or other reference works.
Swiss law does not recognise the term or concept of the “descriptive use defence” as such. Although
certain approaches in doctrine and jurisprudence must be recognised, there has been no systematic
recording and review of these scenarios. Jurisprudence, however, have discussed or confirmed a
number of defences, such as:
a)
reference to a trademark in connection with the provision of independent repair and
maintenance services, in dealing in spare parts and as a reference to product compatibility;
b)
informative use of a trademark as an indication of domicile, origin or specifications of one’s
own products or services;
c)
use of another’s trademark in editorial articles and reports;
d)
decorative use of another’s trademark;
e)
collisions between different distinctive signs, such as trademarks and company names or
names of individuals.
Some of these defences are not based on trademark law per se: Since it was concluded that the
specific use of the disputed sign did not meet the “use as a mark”–requirement, trademark law was
not applied. Here, the limits derive from those imposed by unfair competition law and the provisions
regarding the protection of the personality and of names (cf. Art. 28 and 29 Swiss Civil Code).
1
Other defences have asserted legitimate interests of third parties based on the fundamental
principles of good faith and the prohibition of abuses of the law. In this context, the reference to
another’s trademark was or would be permitted under specific limitations, including that the use
and/or reference be objectively suitable, necessary and appropriate for the advertising of one’s
own products and services.
In the view of the Swiss Group, there is no need for additional limits. Rather, what should be
avoided is that the rights of the owner of a registered mark are ultimately worn away by there being
too many limits and exceptions.
I)
Analysis of current law and case law
The Groups are invited to answer the following questions under their national laws:
1)
Are there statutory limitations of trademark rights in your trademark law? If so, which ones? If
not, have similar concepts been developed in case law? (Please only briefly list the limitations
here; more detailed explanations will be required below).
i)
First of all it must be stressed that under Swiss Law the right in trademark law to
prohibit the use of a mark “only” covers use for identification purposes1 of an
identical or similar mark for the same or similar products in commerce, as distinct
from private use or intracompany use (hereinafter “use as a mark” or “use as a
mark”–requirement, cf. Art. 13 of the Federal Act on the Protection of Trademarks
and Designations of Origin, Trademark Protection Act). In practical terms, the “use
as a mark”–requirement operates as a limit to the effects of a registered trademark.
Further, signs that are in the public domain are excluded from trademark protection
so long and at least as they have not acquired secondary meaning (Art. 2 lit. a
Trademark Protection Act). Thus, if a registered trademark contains elements that are
in the public domain, the owner of this mark cannot prohibit another person from
also using the same element. This, too, can operate as a limit to the effects of a
registered trademark.
ii)
iii)
1
The statutory limits of the effects of a registered trademark are recognised as:
–
non–use following expiry of the period of grace for use and/or defence on the
grounds of non–use (Art. 12 Trademark Protection Act);
–
the prior user right/defence (Art. 14 Trademark Protection Act);
–
the reproduction of trademarks in dictionaries and other reference works (Art.
16 Trademark Protection Act).
In doctrine and jurisprudence, further concepts have been developed that limit the
effects of a registered trademark under certain circumstances. The precise dogmatic
classification of these case–based limits is not conclusively explained either in
jurisprudence or in doctrine. Accordingly, it is not clear whether any of the following
cases would have to be classified as not meeting the “use as a mark”–requirement,
with the result that trademark law would not apply at all. In any case, jurisprudence
has developed the following scenarios that constitute a limit to the effects of a
registered trademark, at least in practical terms:
–
reference to a mark belonging to another in connection with the provision of
independent repair and maintenance services, in dealing in spare parts and as
a reference to product compatibility;
–
informative use of a mark belonging to another as an indication of the location,
origin or properties of one’s own products or services offered;
German: “kennzeichenmässiger Gebrauch”.
2
iv)
2)
use of another party’s registered trademark in editorial articles and reports;
–
decorative use of another party’s registered trademark;
–
balancing of interests in the individual case due to a collision between different
distinctive signs (e.g. right to a name of a third party).
In addition, Swiss Law has a relatively well–developed law on unfair competition
(Federal Act on Unfair Competition), which can also operate as a limit to the effects
of a registered trademark or other distinctive signs.
If descriptive use defences are recognised under your trademark law, what is descriptive use
and what types of descriptive use defences are recognised? (Please only briefly list the types
of descriptive use defences here; more detailed explanations will be required below)
v)
vi)
2
–
The term and concept of the “descriptive use defence” as such are unknown in Swiss
trademark law. Doctrine and jurisprudence have nonetheless developed some
approaches which, at leastin their results, are comparable with the situations listed
under lit. a) to c) of Art. 12 of the Council Regulation (EC) No. 40/94 on the
Community trade mark (CTMR). Under the heading “descriptive (co–) use”2 (which is
not however a term defined in Swiss trade mark law) the following situations that
result in a limitation of trademark rights may be summarised:
–
the right to make a descriptive reference to another’s trademark in connection
with the provision of independent repair and maintenance services, in dealing
in spare parts and as a reference to product compatibility.
–
the right to the informative use of a sign which is another’s trademark or an
element thereof and which refers to the location, the origin or the properties of
one’s own products or services.
Under Swiss Law, however, the above limits on the effects of a registered trademark
are not subject to an express reservation that the use of the third mark be “in
accordance with the honest practices in industrial or commercial matters”, as is
provided in the last sentence of Art. 12 CTMR. It is doubtful whether this approach
may be transposed indiscriminately into Swiss trademark law. Still, applying general
principles established under Swiss Law may lead to a similar result:
–
Any unfair conduct in the “descriptive (co–) use” of another’s mark is subject to
unfair competition law controls, especially as the trademark law and the law on
unfair competition apply cumulatively.
–
In addition, under Swiss Law there is a form of inherent “fairness check” when
examining the defence of “descriptive (co–) use”, by applying the principle of
good faith, which is deeply enshrined in Swiss Law (Art. 2 of the Swiss Civil
Code): The limits not expressly provided for in trademark law can certainly be
understood as a product of a balancing of interests, according to which the
exercise of the rights arising from a registered trademark is also subject to the
prohibition of abuses of the law in terms of Art. 2 para. 2 of the Swiss Civil
Code. Conversely anyone who invokes unwritten limits to the effects of a
registered trademark should exercise such (exceptional) rights according to the
principle of good faith (Art. 2 para. 1 Swiss Civil Code). Against this
background, it is essentially examined whether the reference to the third mark is
indeed “descriptive” only, i.e. that it appears objectively according to the
principle of good faith to be suitable, necessary and appropriate for the
communication and advertising of the user’s own products or services.
German: “sachlicher Gebrauch” or “sachlicher Mitgebrauch”.
3
3)
Is use of one’s own name permissible under your trademark law? If so, under which
circumstances? Specifically, may anyone use his or her name as a trademark?
vii)
4)
5)
Is a company entitled to make use of the “own name” defence? Specifically, is the “own
name” defence only available to a company whose name includes a surname (e.g. William
Smith Limited)? How are conflicts between the company’s use of its “own name” and
confusingly similar trademarks resolved?
viii)
In the first place, a legal entity, for example a company, may also assert the rights to
its own name. This name may be the company name entered in the Commercial
Register or even a (non–registered) company moniker, by which the legal entity is
known. This right exists irrespective of whether the name or part of the name in
question is the name of a person or any other identification mark.
ix)
However it is possible that the use of a junior company name in commerce is
prohibited based on a senior trademark, or that at a minimum a distinguishing
element will have to be added to the company name (the rights described here are
based purely on trademark law). This may be the case especially if the conflicting
signs each consist of the same names of individuals, even if both owners of such
conflicting distinctive signs have a legitimate interest in using their own names (Cour
de Justice du Canton de Geneva, 10 October 1986, Désiré Magnette S.A. c. Désiré
Magnette, cf. SMI 1988, p. 151).
x)
On the other hand, if a senior company name collides with a junior trademark, and
both consist of the same or similar names of individuals, it is not trademark law that
applies, but instead unfair competition law and the specific provisions regarding the
protection of names (cf. Art. 29 Swiss Civil Code). These latter provisions apply since
the exclusive rights deriving from a registered company name only cover use of such
signs acting to identify and individualize a specific legal entity3 (as opposed to the
“use as a mark” identifying the source of specific goods and/or services). Here in
each case a comprehensive balancing of interests will be carried out, whereby
criteria such as the priority of the distinctive sign in question, rarity, public
awareness/notoriety, freedom to choose the sign as well as the overall circumstances
of use or the commercial customs are taken into account. All distinctive signs are of
equal value here; no category of distinctive signs enjoys an absolute priority (BGE
125 III 91 E. 3.c., Rytz). For example, balancing the interests takes place if both the
owner of a trademark and the person entitled to use a personal name or company
name lay claim to the same domain names.
Is the use of indications concerning the characteristics of the goods or services, including the
kind, quality, value, geographical origin or time of production of goods permissible under
your trademark law? If so, under which circumstances?
xi)
3
A person’s own name (name of a natural person or legal entity, company name) may
in principle be used and registered in Switzerland as a trademark. This is however
subject to more deserving rights of third parties (cf. e.g. judgement of the Federal
Supreme Court [BGE] 116 II 619, Gucci). There is therefore no absolute right to use
one’s own name in commerce.
The use of indications of characteristics (by third parties) may be permitted under
Swiss trademark law, but depends again on the individual case. It is a possible case
for the application of “descriptive (co–) use” (cf. Sec. 2 above), but in different
variants:
German: “firmenmässiger Gebrauch”.
4
–
In certain cases, the use of such indications of characteristics does not meet the
“use as a mark”–requirement in the first place, with the result that trademark law
does not apply at all.
–
In other cases, these indications of characteristics only correspond with generic
elements of a senior trademark that are in the public domain, so it will be held
that there is no risk of confusion under trademark law.
Always of relevance are the specific circumstances of the co–use of such indications,
which may cause the reference to a third party mark to be unlawful under the terms
of the law against unfair competition.
6)
Is the use of another’s mark to indicate product compatibility permissible under your
trademark law? If so, under what circumstances? Is only the use of another’s word mark in
ordinary script or neutral letters permissible or also the use of another’s logo or special script
format of the mark?
xii)
7)
This is another variant of “descriptive (co–) use” (cf. Sec. 2 above): The reference to
another’s trademark is permitted if it is objectively suitable, necessary and appropriate
for the advertising of one’s own products and services. It is decisive that the relevant
circles in commerce are not deceived as to the relationship between the advertiser and
the proprietor of the mark (cf. e.g. BGE 128 III 146, VW / Audi specialist). In most
cases, a (graphically) neutral reference to another’s word mark will be sufficient in
order to convey the intended message in the market. In contrast, the (additional) use of
graphic elements / written slogans should only be permitted in special circumstances.
Is decorative use of another’s mark permissible under your trademark law? If so, under what
circumstances?
xiii)
If the trademark of a third party is used only as a design element of a given product
and not as a distinctive sign, again, this type of use does usually not meet the “use
as a mark”–requirement and is therefore outside the scope of Art. 13 para. 1 of the
Trademark Protection Act (Court of Appeal of the Canton of Bern in sic! 1998, 59,
Montres CFF II). Here the opinion of the relevant circles in commerce is decisive. For
the sake of good order, however, the restrictions imposed by Art. 15 of the
Trademark Protection Act in the case of famous trademarks must be taken into
account, whereby it is still unclear whether the scope of application of Art. 15
Trademark Protection Act (protection of trademarks with wide repute) is limited itself
by the “use as a mark”–requirement.
In the case of the purely decorative use of the trademark of a third party, the limits
imposed by unfair competition law and the provisions regarding the protection of the
personality and of names (cf. Art. 28 and 29 Swiss Civil Code) must be observed.
8)
Is use of descriptive terms permissible regardless of whether it is in accordance with honest or
fair practices or whether it constitutes unfair competition? If descriptive use of another’s mark
is only permissible if it is in accordance with honest or fair practices, what are typical
examples of use which are not in accordance with honest or fair practices?
xiv)
First of all, it should be stated that unfair conduct does not enjoy any protection and
is primarily subject to the provisions of the Federal Act on Unfair Competition; under
certain circumstances this is also the case even if the laws on trademarks and
company names are not presumed to apply ( BGer. 4C.240/2006, Modissa /
Modesa). In addition, under Art. 2 of the Swiss Civil Code conduct that is an abuse
of the law enjoys no form of protection.
5
xv)
Third parties making reference to another’s trademark must do everything they can to
avoid misconceptions or “deception” on the part of customers about his relationship
with the owner of the mark (cf. e.g. BGE 128 III 146, VW/Audi specialist). In other
words, they must avoid a situation where customers, for example, assume that spare
parts are produced by the owner of the mark or that there are commercial relations or
that they are even dealing with an official sales outlet. As stated in Sec. 2 at No. v)
above, the right to make “descriptive (co–) use” of a third party’s trademark must in
each case be objectively suitable, necessary and appropriate for the communication
and advertising of the user’s own products or services.
xvi)
The use of one’s own trademark that is identical or at least similar when compared
with a senior trademark may under certain circumstances be permitted. Such
scenarios are examined according to the general principles of trademark law, but
with certain limits being imposed on the owner of a senior trademark. In fact, anyone
has the right
–
to co–use a sign that basically belongs to general vocabulary in its original
meaning (Federal Board of Appeals for Intellectual Property [RKGE] in sic!
2000, 376, Clinique / Clinique Hartmann Paris);
–
to co–use a sign from general vocabulary, but only if there is no reasonable
alternative (Court of Appeal of the Canton of Bern in sic! 2005, 878 [decision
on measures], Century / Century Edition, in connection with a reference to the
centenary of the company);
–
to co–use their own name, subject to the reservation of overriding interests of a
third party with the same name.
All these limits on trademark rights also remain subject to an examination under
unfair competition law aspects.
9)
Do the above mentioned types of descriptive use constitute limitations of trademark rights
because they would not be regarded as “use as a mark” or are they specifically exempted
regardless of whether trademark use is involved?
xvii)
As already explained, Swiss Law does not recognise the term or concept of the
“descriptive use defence” as such. Although certain approaches in doctrine and
jurisprudence must be recognised, there has been no systematic recording and
review of these scenarios. Certain groups of cases (e.g. editorial articles and reports,
decorative use, intra–company use, use in body text) do not comply with the “use as
a mark”–requirement and therefore do not give rise to a claim for prohibition under
trademark law (although in each case the limits under unfair competition law may
apply). However, the “use as a mark”–requirement is broadly interpreted and
theoretically also covers use as a business name, other commercial name / trade
name or domain name. On the other hand, it remains somewhat unclear whether
other situations, such as the non–visible use of trademarks (e.g. in the form of
meta–tags on the internet) are to be regarded as “use as a mark” and would
therefore be vulnerable to prohibition under trademark law.
xviii)
In other cases (e.g. reference to product compatibility or one’s own trademark rights
or right to a name) the legitimate interests of a third party may prevail over trademark
law and take precedence in the sense of “grounds for justification” based on the
fundamental principle of good faith and the prohibition of abuses of the law in terms
of Art. 2 of the Swiss Civil Code.
6
10) If your trademark law recognises other types of descriptive use defences which have not been
discussed above, please explain.
xix)
Art. 16 of the Trademark Protection Act confirms that the reproduction of trademarks,
for example, in dictionaries is permitted. However, in return Art. 16 of the Trademark
Protection Act gives the proprietor of the mark the right to request the publisher to
indicate a reference to the existence of trademark protection (e.g. ®), and this can
accordingly act to prevent degeneration of the trademark. In practical terms, the
provisions of Art. 16 of the Trademark Protection Act are certainly not a limit on
trademark protection, but involve a limited, express extension of trademark
protection although the reproduction of a registered trademark in a dictionary is
clearly not falling under the “use as a mark”–requirement.
11) Does your trademark law provide for a prior user right/defence? If so, under what circumstances?
xx)
In accordance with Art. 14 of the Trademark Protection Act, the owner of a
registered mark cannot prohibit a third party from continuing to use a sign to the
same extent that it was used before filing. The earlier use must, however, be genuine,
but can equally be merely local and may be used for sales that involve no
advertising. Subject to this requirement, the sign may continue to be used within the
same limits as regards subject matter and territory. The right to make continued use
may however only be assigned or sold along with the business itself.
12) If your trademark law provides for other limitations of trademark rights which have not been
discussed above, please explain.
xxi)
II)
Non–use–claim: a registered trademark is only protected provided it is also used in
connection with the goods and services claimed (Art. 11 Trademark Protection Act). If
the owner of the trademark has not used the mark for an uninterrupted period of 5
years, he can no longer claim his trademark rights, unless there is good cause for his
non–use of the mark. If use is later initiated (or reinitiated), the trademark right is
revised with its original priority, unless someone has in the meantime claimed non–use
(Art. 12 Trademark Protection Act). The third party in this case obtains a right vis–à–vis
the proprietor of the mark to make continued use of the mark, i.e. with regard to the
third parties the date of the effective start of use applies and not the filing priority. The
trademark may however only be deleted if a related court judgement is obtained.
Proposals for adoption of uniform rules
The Groups are invited to put forward proposals for adoption of uniform rules regarding
limitations of trademark rights. More specifically, the Groups are invited to answer the
following questions:
1)
Should descriptive use of another’s trademark be permissible? If so, under what circumstances?
Should descriptive use of another’s trademark be permissible regardless of whether it is in
accordance with honest or fair practices or whether it constitutes unfair competition?
xxii)
In the view of the Swiss Group, the “descriptive (co–) use” of a trademark should be
permitted under certain restrictive circumstances. Use that is not falling under the
“use as a mark”–requirement should basically be allowed, subject to the reservation
of additional circumstances relevant to unfair competition law. The Swiss Group
regards a list of limits analogous to Art. 12 CTMR as being useful, but has doubts
about reconciling these limits with re–quirements motivated by unfair competition law
(“in accordance with the honest practices in industrial or commercial matters”, Art.
12 CTMR last sentence). Instead, the “fairness check” when examining a defence on
the grounds of “descriptive (co–) use” should be carried out by applying the principle
7
of good faith, which is firmly enshrined in Swiss Law (Art. 2 Swiss Civil Code): the
limits not expressly provided by trademark law would then be understood as a
by–product of a balancing of interests, in terms of which the exercise of rights arising
from a registered trademark are also subject to the prohibition of abuses of the law
in accordance with Art. 2 para. 2 of the Swiss Civil Code. Conversely those who rely
on an unwritten limit on the trademark right would have to exercise the rights
conferred on them due to this limit in accordance with the principle of good faith (Art.
2 para. 1 Swiss Civil Code). As to the defence of “descriptive (co–) use” it would
essentially be examined whether the reference to the third mark is “descriptive”, i.e.
objectively appears suitable, necessary and appropriate for the communication and
advertising of the party’s own products and services in accordance with the principle
of good faith.
xxiii)
2)
Should use of one’s own name be permissible? If so, under which circumstances? What
should the position regarding the use of corporate names be?
xxiv)
3)
Provided the reference to the properties of one’s own products and services is not
applied as a distinctive sign of its own, it should be permitted. In addition, in the case
of the circumstances listed under Sec. 8 xvi), use should be permitted even if such
indications are featured as a distinctive sign. Here as before, however, the
“descriptive (co–) use” of another’s trademark is in each case subject to an ex–
amination under unfair competition law aspects.
Should the use of another’s mark to indicate product compatibility be permissible? If so, under
what circumstances? Should only the use of another’s word mark in ordinary script or neutral
letters be permissible or also the use of another’s logo or special script format of the mark?
xxvi)
5)
The use of one’s own name in business should in principle be permitted. In the view
of the Swiss Group, this should, however, not always apply, just as no other type of
sign should take absolute precedence. Accordingly, a comprehensive balancing of
interests in the individual case must be carried out.
Should the use of indications concerning the characteristics of the goods or services, including
the kind, quality, value, geographical origin or time of production of goods be permissible? If
so, under which circumstances?
xxv)
4)
Such limits must in every case be restrictively interpreted in order to protect the
interests of the owner of a registered trademark. Extreme caution is required
especially in the case of “descriptive (co–) use” of another’s trademark, as far as such
use is designed to identify one’s own products and/or services and therefore clearly
constitutes “use as a mark”.
In the view of the Swiss Group, a reference to another’s trademark should be
permitted, provided this is objectively suitable, necessary and appropriate for the
communication and advertising of own products and services. The use of another’s
trademark must in every case be limited to the extent that it is required. With this in
mind, the use of another’s logo or special script should only be permitted under very
special circumstances.
Should decorative use of another’s mark be permissible? If so, under what circumstances?
xxvii)
The decorative use of another’s mark should be permitted subject to restrictive
pre–conditions, whereby it must be decided, based on the opinion of the relevant
circles in commerce, whether the use of the trademark is (mis–)understood in the sense
of “use as a mark” or seen merely as a design element in the presentation of the goods.
Each case is also subject to an examination under unfair competition law aspects.
8
6)
Should trademark law provide for a prior user right? If so, under what circumstances?
xxviii)
7)
It is in keeping with the principle of good faith in commerce that the bona fide earlier
use of a mark must not be prevented by the subsequent registration of the mark. In
this sense, regulation in terms of Art. 14 Trademark Protection Act appears sensible.
Should trademark law provide for other limitations of trademark rights which have not been
discussed above? If so, under what circumstances?
xxix)
In the view of the Swiss Group, there is no need for additional limits; what should
however be avoided is that the rights of the owner of a registered mark are ultimately
worn away by there being too many limits and exceptions.
National Groups are invited to comment on any additional issue concerning limitations of
trademark rights which they find relevant.
9