As per January 1, 2017, it will be possible to request the cancellation of non-used trademarks from the Swiss trademark register in a simplified procedure with the Federal Institute for Intellectual Property (“FIIP”).
This procedure will apply to all Swiss trademarks that have not been used during the past five years in a rights-preserving way for the registered goods and services. To date, complex and costly court proceedings had to be initiated for that purpose.
Background
According to art. 12 of the Swiss Trademark Act, trademark rights may no longer be asserted if the trademark has not been in use for an uninterrupted period of five years, unless there is good cause for that non-use. Formally, such a trademark remains registered, but materially loses its substance and thus, ultimately, its entitlement. Trademarks that have not been used in commerce do not deserve protection and must be released. However, third parties desiring to use a similar sign or register such sign as a trademark will only gain certainty about the non-existence of the foreign right once the non-used trademark is deleted from the trademark register.
Under applicable law, even in clear-cut cases, costly and complex court proceedings must be initiated in order to have even a substantially perished trademark removed from the register. With the so-called „Swissness Revision“, entering into force on January 1, 2017, a simplified cancellation procedure will be instituted by the FIIP, similar to what already exists in many foreign jurisdictions. Henceforth, against a modest fee, it will be possible for any person to file a petition with the FIIP for deletion (cancellation request) of a trademark that is vulnerable to cancellation.
Cancellation Request
The applicant must assert the non-use and provide suitable evidence (for instance research on the use, certifications of third parties). This will ensure that a certain substantial examination of the legal situation takes place even if the trademark owner does not participate actively in the proceeding. Abusive cancellation requests will be prevented. Credible evidence will need to meet the standard of evidence, i.e. the non-use must seem likely based on an objective consideration of the filed evidence. It is not necessary to file strict proof. For instance, if the registered owner of a trademark no longer exists, this will be deemed beyond doubt as an indication of non-use.
In case the cancellation request is justified, the FIIP will approve the request and cancel the trademark from the register (once the decision comes into force) to the extent that the non-use has been credibly shown. In case the non-use was not credibly shown, the FIIP will reject the cancellation request.
On the part of the trademark owner, it will not be sufficient to merely object in order for a sufficiently substantiated cancellation request to be rejected. Rather, the trademark owner must show that the trademark is genuinely in use (e.g. by providing copies of invoices, advertisement documentation, etc.).
Good Cause for Non-Use
As a defense argument, the trademark owner may also claim good cause for non-use. As such, any circumstance will be allowed which occurs independently from the trademark owner’s will and constitutes an impediment to the use of the trademark – for instance, import restrictions or state regulations regarding the registered goods and services. Mere technical or economic difficulties that were foreseeable or calculable are not sufficient. This exemption clause is handled restrictively.
Rights-preserving Use
In order to prevent that a trademark becomes vulnerable to cancellation due to non-use, a so-called rights-preserving use is required. A trademark is used in a rights-preserving way, inter alia, if it is used as a trademark, i.e. used to distinguish or individualize the registered goods and services in commerce. The mere use of a trademark, for instance, as a company name or in a purely ornamental way, is not sufficient, meaning if the trademark is used purely to identify the company (instead of its products/services) without a specific relationship to the products/services, or if the trademark, in its particular use is perceived as pure decoration (rather than as a trademark).
Furthermore, a trademark must be used as registered. However, use in a form that does not substantially deviate from the registration is also adequate. The crucial factor is that potential deviations do not change the identity of the characteristic element of the trademark, meaning that distinctive elements must not be omitted. Marginal deviations (for instance the slight modernisation of a logo), on the other hand, are allowed.
Furthermore, the trademark owner must genuinely want to satisfy a demand of the market. Mere stand-alone actions do not suffice – a minimal market impact is necessary. Normally, according to court practice, for instance, a turnover of approximately CHF 8’000.00 per year for goods of mass consumption (e.g. pastries) will not be sufficient to credibly show a genuine, rights-preserving use of the trademark.
Partial use
If the non-use is only credibly shown for a part of the registered goods or services, the FIIP will approve the request only for that respective part and will cancel the trademark for the remaining goods and services. In this context, interesting questions arise about the impact of a partial use of a trademark on the registered goods and services, particularly if the trademark is registered for an umbrella term: Will the use of ladies’ bicycles or riding breeches, respectively, be rights preserving for only bicycles or trousers, respectively, or in general also for vehicles or clothing, respectively? Practical experience will have to show the way.
Recommendation
The new cancellation procedure will enable you to have conflicting trademarks that are vulnerable to cancellation removed from the trademark register in a fast and cost-efficient way as of January 1, 2017.
In order to safeguard the existence of one’s own trademark rights (after the grace period for non-use of five years) a rights-preserving use of the trademark (as registered) in relation to the respective goods and services and in relation to the extent of the use is required. As a trademark owner, you are well advised to regularly examine and, as the case may be, optimise the use of your trademark and to make the responsible persons in distribution and marketing aware of the issue. In this context, you should bear in mind that if the use of a non-used trademark is taken up again at a later point in time, the defect of the interim non-use will be repaired and the trademark will be restored to the full original extent. With this change in procedure, it will now be all the more important that you document the use of your trademark, preferably without interruption.
In case of attacks against confusingly similar third party trademarks, you should exercise caution in the future all the more if your own trademarks are vulnerable to cancellation themselves. A differentiated prior analysis of the trademark use situation is necessary in either case.
We will gladly assist you in case of questions.
