A walk on the WILD side

Case No. 4A_234/2018 ¦ Decision of 28 November 2018 (Supreme Court) on appeal against HG 13 20 ¦ Decision of 08 February 2018 (Commercial Court Berne, unpublished)

Nothing is currently surfacing at the FPC. So I dissected yet another trademark case over the holidays, this time from the Supreme Court.

To put this case in context, it is helpful to know that WILD Heerbrugg was a Swiss company established in 1921 that produced high quality optical instruments; see the Virtual Archive of WILD Heerbrugg for further information. The company merged with Ernst Leitz Wetzlar GmbH in 1986 to form the WILD Leitz Group.

Leica logo

When Leica Holding B.V. was established in 1990, the name ‘WILD’ disappeared. After Leica Camera was spun off in 1996, the remaining group split into Leica Geosystems and Leica Microsystems in 1997.

But the name ‘WILD’ did not disappear completely; it still lives on: The former Austrian production site of WILD Heerbrugg was transformed into the WILD group of companies.

The old trademark ‘WILD Heerbrugg’ and some related signs had been abandoned by the aforementioned companies. However, the plaintiff in the present matter apparently got interested in them later — and troubled both Leica and the WILD Group.

The plaintiff Thomas Oelmayer1 sought a declaratory judgment against WILD Elektronik und Kunststoff GmbH & Co KG (a member of the WILD Group of companies) at the Commercial Court Berne that the Swiss part of the international trademark registration ‘WILD ELECTRONICS’ (stylised; see WIPO Global Brand Database, 837 979 ) was invalid, based on his trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 624 864).

I could not spot any connection between the plaintiff and the former Wild Heerbrugg company, neither in the judgment nor by my own research. The defendant countersued for nullity of Mr Oelmayer’s trademark and argued that it was an abusive registration.

Walk on the wild side (Lou Reed, 1972)

Note that this ground of nullity is not codified in the TmPA. But according to established case law of the Supreme Court, no protection can be claimed for registered trademarks if they have not been filed for the purpose of use, but with the intention of preventing the registration of corresponding signs by third parties, of increasing the scope of protection of actually used trademarks (127 III 160, ¶1a) or of obtaining financial or other advantages from the previous user (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.4). The absence of an intention to use entails the invalidity of the registered trademark (127 III 160, ¶1a; 4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5). The inadmissibility of such trademarks registered without the intention to use them and thus of misuse constitutes, in addition to the non-inclusion of use (Art. 12(1) TmPA), an independent fact for the loss of the trademark right, and the respective owner of the trademark cannot invoke the grace period for use (4A_429/2011, ¶3.2; 4C.82/2007, ¶2.1.5).

And, indeed, the Commercial Court Berne held on the basis of various circumstances that Mr Oelmayer filed the trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 624 864) — as well as an earlier stylised trademark ‘WILD HEERBRUGG’ (see Swissreg, CH 567 937) which was not the subject of the dispute — without the intention to actually use it, but with the intention to attack existing trademarks and to demand money for the settlement of trademark disputes. By registering the word trademark ‘WILD HEERBRUGG’, the applicant sought, in disputes with Leica Geosystems AGLeica Microsystems Holdings GmbH and with WILD Elektronik und Kunststoff GmbH & Co KG, to counter the objection that the grace period for the use of the earlier stylised trademark ‘WILD HEERBRUGG’ (CH’937) had expired. The Commercial Court therefore held that the filing of the trademark ‘WILD HEERBRUGG’ (CH’864) was abusive. Defendant’s counterclaim for invalidity of Mr Oelmayer’s trademark was thus approved. All costs were clapped on the plaintiff, in view of the abuse.

Plaintiff’s initial claim had been written off because it had become devoid of purpose: Defendant’s Swiss designation of the international trademark had not been renewed in 2014. In my understanding, this happened by accident. The defendant later applied for a Swiss national trademark; see Swissreg, CH 675 230.

Defendant’s stylised trademark

Opposition proceedings between the same parties are currently pending at the IPI.

Now, how does a court determine the lack of an intention to actually use a trademark?

In general terms, the person who derives rights from it must prove a fact (Art. 8 CC); thus, the party who invokes this ground for invalidity (cf. 127 III 160, ¶1a) bears the burden of proof for the lack of intention to use. However, the lack of intention to use is a negative and, moreover, an internal fact which can hardly be proven positively. The Supreme Court therefore assumed with the doctrine that, within the framework of the duty to cooperate, the opposing party may be required to document or at least claim the reasons why the registration of the trademark forms part of a fair trademark strategy, despite the inconsistencies which the plaintiff had pointed to. If this explanation appears to the judge to be untrustworthy, the abstract proof must suffice for the typically defensive constellation within the overall assessment (4A_429/2011, ¶5.1 with reference to EUGEN MARBACH, Markenrecht, SIWR Bd. III/1, 2nd ed. 2009, ¶1446).

Mr Oelmayer lodged an appeal to the Supreme Court, but failed.

The Supreme Court held that the Commercial Court had established the facts well in accordance with the law, and parties cannot allege facts beyond that; Art. 105 (1) FCA. If, for example, the appellant submitted to the Supreme Court that he had documented acts of use (preparation) and thus emphasised his abstract will to use by preparing a business plan two years before filing the application, submitting a license agreement concluded in 2014, applying for several patents (which I could not spot in esp@cenet), seeking financing possibilities and presenting the “surgical microscope” project, he only criticised in an inadmissible manner the assessment of evidence in the first instance. By asserting that the 2014 license agreement had at least implicitly existed since the trademark had been filed, because it had been intended from the outset to license or transfer the trademark to the company to be established, he departs from the findings of fact in the contested decision without raising a sufficient complaint in this respect. Further, the Supreme Court held that the appellant did not raise any admissible objection in connection with the determination of the Commercial Court that the procedural conduct of the appellant indicated that his evidence of intention to use had either only been alleged or had only been produced with a view to the pending proceedings. The same applies to the findings in the contested decision, according to which his actions with regard to the trademark registrations indicate the intention to be bought out of the way by the parties concerned or according to which there are concrete indications that the appellant was seeking to negotiate financial advantages.

The Supreme Court thus dismissed the appeal; the judgment is now final. 

Reported by Martin WILMING

1 The decision is partially anonymised, but the name Oelmayer is still mentioned in plain language (¶A.h). Anyway, the parties are most easily identifiable with Swissreg based on the trademarks at stake. Since Thomas Oelmayer is a public person (see Wikipedia), I chose to not beat around the bush, in accordance with the Codex of this Blog — take me back ↺


Case No. 4A_234/2018 ¦ Decision of 28 November 2018 (Supreme Court) on appeal against HG 13 20 ¦ Decision of 08 February 2018 (Commercial Court Berne, unpublished)

Thomas Oelmayer
WILD Elektronik und Kunststoff GmbH & Co KG

Panel of Judges:

  • Dr. Christina KISS
    • Dr. Fabienne HOHL
    • Dr. Martha NIQUILLE

Court Clerk:

  •  Dr. Matthias LEEMANN

Representative(s) of appellant / plaintiff:

Representative(s) of respondent / counter-claimant:


UPDATE 14 August 2019:

A kind reader has sent me a copy of this first instance decision earlier today, which is now included hereinbelow.

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