A stylised fish does NOT have a significant religious meaning

Yet another episode of my recent trademark series. /MW

Case No. B-4729/2018 (FAC) | Decision of 12 December 2018

Richemont’s trademark application 58809/2016, a stylised fish, for watches etc. in class 14 had been rejected. The IPI held that the sign was of religious content, and its commercial use would offend the religious feelings of an average member of Christianity. The rejection was based on Art. 2 lit. d TmPA, i.e. the sign was held to be contrary to morality.

Indeed, the Christian Ichthys symbol looks somewhat similar:

Still, there are differences: The comparatively large caudal fin, in relation to the body; and the fin is closed in Richemont’s version, but open in the Ichthys symbol. However, both the IPI and the FAC held that these differences do not alter the overall impression of the sign which is still perceived as an Ichthys symbol; ¶4.5.

Next, the FAC had to assess whether the use of the sign as a trademark was likely to offend the religious feelings of an average member of Christianity.

IR 855’013

Prior case-law had rejected trademark applications when they concerned figures who occupy a central position in the respective religions; e.g., the FAC had confirmed the IPI’s rejection of the trademark ‘Madonna (fig.)’, IR 855’013, with decision B-2419/2008 of 12 April 2010, and the Supreme Court again confirmed this assessment; 136 III 474, decision of 22 September 2010.

The FAC reiterated again from its prior ‘Madonna (fig.)’ decision that the position of the religious figure in the respective belief system must be examined. The mere fact that the Madonna was not part of the Trinity did not exlude immorality. The intense veneration of the Madonna, which clearly goes beyond the veneration of certain saints, suggests a central role for the majority of Christians belonging to the Catholic Church. It followed that, under certain circumstances, the commercial use of signs which are not directly central to a religious community may still be considered immoral. On the other hand, not every use of a sign that has a religious meaning is automatically immoral. Rather, the disputed sign must play a central role in the religious community in question. The sign must have an important religious meaning and the commercialization of the sign must be likely to violate religious feelings of the member of this religion and endangering social peace, for it to be excluded as immoral.

Now, is the stylised fish really a central symbol of Christianity, as the IPI had argued?

The FAC held that this is not the case. In comparison with the signs previously regarded as immoral because of the violation of religious feelings, the disputed mark has no important religious meaning; ¶5.4.

Im Vergleich mit den bisher wegen Verletzung des religiösen Empfindens als sittenwidrig erachteten Zeichen kommt der strittigen Marke […] kein wichtiger religiöser Sinngehalt zu.

The FAC noted that the fish symbol surely had an essential meaning in early Christianity, but it already existed in very different forms at that time. The symbol, consisting of two curved lines, then essentially got forgotten for almost two millennia. It was not until the 1970s that it was rediscovered in its present form. As a symbol for Jesus, however, the sign is rather secondary. The central sign of Christianity is and remains the cross (see ‘Das Kreuz mit dem Fisch‘, referred to in the decision).

Although the Ichthys symbol is relatively widespread, its religious significance for Christianity is not on the same level as the Trinity (Father, Son and Holy Spirit) or the Cross symbol. The meaning of the sign is also not comparable with the value of the Mother of Jesus (Madonna), who is intensely venerated, which is why she also has a central role. The Ichthys symbol does not play such a central role. The symbol is not used by name in religious rites, is neither venerated nor worshiped.

The meaning of the fish symbol thus shares the fate of numerous other Christian signs which have religious connotations, but which do not play a central role in the religious community or in religious symbolism, such as the signs Alpha and Omega, Anchor, Dove, Water, etc. (see e.g. ‘Symbole des Christentums‘ (Wikipedia) and ‘Christliche Symbole‘, both referred to in the decision).

Accordingly, the FAC held that it cannot reasonably be assumed that the commercialization of the Richemont fish is likely to violate the religious feelings of the average member of Christianity, in particular since extreme sensitivities are not taken into account (see 136 III 474, ¶4.2). Further, the FAC noted that there are numerous previous registrations of marks which clearly identify the disputed Ichthys symbol, and similar signs have been used in commerce for a long time without any apparent violation of religious sensibilities.

Hohenzollern Bridge during the Protestant Church Congress 2007 in Cologne, decorated with half of an Ichthys. Image courtesy of Matthias Zepper; reproduced under a CC BY 2.5 license, without modifications.

As always, I cannot help but wonder about the background of the matter: What’s the purpose of Richemont’s fish?

Frankly, I don’t know.

But what comes to my mind is that IWC (a Richemont brand) formerly used a fish on the crown to indicate that the watch was water-resistant.

See the fish symbol on the crown of an IWC Big Pilot Ref. 5002 ‘Transitional’ here. In more recent times, IWC used their ‘Probus Scafusia’ logo on the crowns.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. B-4729/2018 (FAC) | Decision of 12 December 2018

Richemont International SA
./.
Swiss Federal Institute of Intellectual Property (IPI)

Panel of Judges:

  • Daniel WILLISEGGER
  • David ASCHMANN
  • Pietro ANGELI-BUSI

Court Clerk:

  • Pascal WALDVOGEL

Representative(s) of Richemont:

FULL TEXT DECISION

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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 [email protected]), 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 ↺

BIBLIOGRAPHY

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:

DECISION IN FULL 

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The eagle has landed

Yet another trademark case (a quite fashionable one), while still nothing is currently surfacing at the FPC.

Case No. HG 17 77 | Decision of 9 November 2018

As already reported in the newspaper ‘Der Bund’ on 19 December 2018, the Swiss watch manufacturer Glycine Watch SA was ordered to abstain from using its current logo because it could be confused with the logo of the luxury label Giorgio Armani.

Glycine had been distributing and promoting its watches under its old label already for quite a long time, and the old logo had not been objected to by Armani. But Armani felt uncomfortable with Glycine’s new logo that had been introduced in 2015. It is the design of the crown that had been changed: The crown seemingly got wings … — or is it an eagle?

Glycine had sought trademark protection for both the old and the new logo, as follows:

P-377813
672806

This is how the different Glycine logos appeared on watches, compared to an Armani watch:

Now, are Glycine’s new logo and Armani’s eagle logo confusingly similar?

Armani invoked the following trademarks:

2P-449697
2P-450913
P-501934
P-499717
2P-345300 ARMANI

Armani considered that Glycine’s new logo would create a likelihood of confusion with its own brand. After having sent warning letters to Invicta Watch Company of America, Inc. (the American parent company of Glycine Watch SA) and also directly to Glycine Watch SA, Armani finally brought an action before the Commercial Court Berne. Armani requested that Glycine Watch SA be ordered to abstain from using the stylised ‘wing crown’ logo and the word ‘AIRMAN’, based on both its earlier trademark rights and the Swiss Act against Unfair Competition (UCA).

The Commercial Court Berne indeed forbid the use of the logo

with and w/o the additional word ‘AIRMAN’. An appeal is currently pending at the Supreme Court.

It is always interesting to compare decisions of different courts and offices. Armani had also filed an opposition against the corresponding European Union trademark no. 015910301 with the EUIPO, based on its older trademark no. 015743891.

015910301
015743891

The EUIPO rejected Armani’s opposition (case no. B 2 832 882); see the decision here. An appeal is currently still pending.

While the case before the EUIPO was an opposition and the one before the Commercial Court Berne was a trademark infringement case, both had to assess similar issues. The Commercial Court Berne took notice of the EUIPO’s earlier decision (¶34.3.5), but did not agree in respect of the similarity of the signs and the degree of brand awareness.

The Opposition Division of the EUIPO had concluded that insufficient evidence had been submitted to support the assumption of a well-known mark. Consequently, it considered the distinctiveness of Armani’s mark as just normal. As to the similarity of the signs, the EUIPO held (¶e, fourth paragraph) that

[…] the distinctive verbal element ‘GLYCINE’ is of primary importance and the figurative element is of less impact. […], the presence of the term ‘GLYCINE’, on goods bearing the contested mark, in conjunction with a markedly different bird device is sufficient to avoid confusion.

In striking contrast, the Commercial Court Berne concluded that the plaintiff’s trademarks were indeed well-known trademarks, with an extended scope also for watches (¶31.3.3):

The Court considers the reputation of the applicant’s marks […] for fashion to be notorious. […] Furthermore, the Court assumes that the resulting extended scope of protection must also be affirmed for watches, as very common fashion accessories.

The Commercial Court Berne neither agreed with the EUIPO’s assessment of similiarity of the signs, but rather applied the regular principle that even the addition of an entirely different word element does not alter the similarity of the signs in the case of an identical or only slightly altered adoption of the dominant figurative element; ¶¶34.2.2, 34.3.4.

Despite the size of the word element, the figurative element is better remembered in this case because, due to its visual similarity, it evokes a reflexive association with the plaintiff’s well-known eagle marks and is thus characteristic of the overall impression.

It will be interesting to follow the further course of the proceedings at the appeal stage, both at the Swiss Supreme Court and the EUIPO.

Reported by Thorsten MÜLL and Martin WILMING

BIBLIOGRAPHY

Case No. HG 17 77 | Decision of 9 November 2018

Giorgio Armani S.p.A.
./.
Glycine Watch SA

Panel of Judges:

  • Christian JOSI
  • Alexander PFISTER
  • Annemarie LEHMANN

Court Clerk:

  • Iris KÄMPFEN

Representative(s) of Plaintiff:

Representative(s) of Defendant:

FULL TEXT DECISION*

Commercial Court Berne
Case HG 17 77

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*Kindly provided by Andrea MONDINI.

FULL TEXT DECISION

EUIPO Opposition Division
Case B 2 832 882

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FAC overrules IPI and acknowledges acquired distinctiveness of the sign POSTAUTO

No patent matter this time, but rather a trademark case with a very Swiss touch.

The Swiss Post filed the trademark application 61979/2010 ‘POSTAUTO’ already back in November 2010; see Swissreg. After the original application had been split up and a first trademark had been allowed to proceed to grant with a relatively wide scope covering inter alia transportation of goods and persons and operation of buses according to timetables in class 39 (CH 674’035; see Swissreg), the IPI maintained its objection with respect to some further goods and services and refused the remaining application on 31 December 2015. The IPI held that the sign ‘POSTAUTO’ was purely descriptive for these goods and services, and that it was not credible that the sign had gained distinctiveness through use.  The following list of goods and services was at stake:

9 Magnetic or optical data carriers.
12 Vehicles.
16 Printed matter.
28 Toys, especially Postbus models.
39 Storage and packaging of goods; travel arrangements; planning (transport logistics) of transport solutions for passengers and goods; arranging transport services; renting vehicles; operating vehicles on a joint basis (car-sharing, carpooling); consultancy services for all the above services.
41 Services related to education and training, in particular in the field of transport, the carriage of persons, goods and goods.

PostAuto Schweiz AG is a subsidiary company of Die Schweizerische Post AG (Swiss Post). But Postauto is not only the name of a company, it is also a very well known brand in connection with public transport services; see e.g. Wikipedia.

Postauto Logo

It is not overly bold to assume that almost every child is well aware of the sign ‘POSTAUTO’ in Switzerland …

Postauto toy (Siku)

And it’s been like that for quite a while …

Post bus (1907). Source: PTT-Archive.

In first place, the FAC confirmed the IPI’s finding that ‘POSTAUTO’ is not a distinctive sign per se. Rather, ‘POSTAUTO’ is perceived plainly descriptive for a postal car or postal bus.

As an auxiliary measure, Swiss Post had requested that the sign be registered because it had become a trademark through use; Art. 2 lit. aTmPA.

Now, this is where it’s getting interesting: The IPI even refused this auxiliary request.

But the FAC did not agree for the majority of goods and services, in very clear terms; see ¶7.3. The FAC held that the IPI erred in law when it did not examine the reputation of the sign, in addition to just assessing the evidence of use that had been submitted.

So hat die Vorinstanz es rechtsfehlerhaft unterlassen, neben der Beurteilung der Gebrauchsbeilagen die Bekanntheit des hinterlegten Zeichens zu prüfen.

The FAC further held that the Swiss Post should have benefited from the fact that, throughout Switzerland, the sign has acquired the significance of a keyword-like reference to the public transport services offered by the Swiss Post for decades throughout the entire Swiss settlement area, as well as to related services. The evidence of use must be assessed in the light of the reputation of the sign at stake, based on decades of intensive use throughout Switzerland. In its assessment to the contrary, the IPI failed to include in the required overall assessment the circumstances which were relevant for the acquired distinctiveness through use. 

The FAC held that it is known to the court that the sign ‘POSTAUTO’ has been in use as a trademark since long ago for goods in classes 9 and 16; see ¶7.6:

Dass das hinterlegte Zeichen im Zusammenhang mit den Waren der Klassen 9 und 16 aufgrund des schweizweiten Streckennetzes bereits seit Jahren markenmässig verwendet wird, ist gerichtsnotorisch.

Pretty straight-forward, isn’t it? In addition to printed timetables, the network routes are nowadays even available online — and I can hardly even remember a time when this had not been the case.

The FAC further held that the IPI fundamentally overlooked the fact that its requirement of proof of ten years’ use of a sign is not sacrosanct.

Die Vorinstanz übersieht sodann grundlegend, dass ihre Beweiserleichterung eines zehnjährigen Markengebrauchs nicht dazu dienen soll, die Wahrnehmung des Marktes jener zehn Jahre absolut zu stellen (vgl. Urteil des BVGer B-6363/2014 vom 8. Juli 2016 E. 8.3 “Meissen”).

If a sign has been successfully marketed for decades, only a few declaratory pieces of evidence of the last ten years are well sufficient. In the case at hand, the very long use of the sign and its excellent market position mean that there is no need for specific evidence from French- and Italian-speaking parts of Switzerland, where sufficient dissemination and recognition can simply be deduced from the excellent reputation of the appellant over decades and its uninterrupted market presence to this day; see ¶7.6.

In sum, the FAC only denied acquired distinctiveness of the sign ‘POSTAUTO’ for class 12 (vehicles) and, partially, class 39 (operating vehicles on a joint basis (car-sharing, carpooling)). The final list of goods and services thus reads as follows:

9 Magnetic or optical data carriers.
12 Vehicles.
16 Printed matter.
28 Toys, especially Postbus models.
39 Storage and packaging of goods; travel arrangements; planning (transport logistics) of transport solutions for passengers and goods; arranging transport services; renting vehicles; operating vehicles on a joint basis (car-sharing, carpooling); consultancy services for all the above services.
41 Services related to education and training, in particular in the field of transport, the carriage of persons, items and goods.

Frankly, the decision is not much of a surprise on a substantive level, in my perception. But why does it take eight years and two instances to get there?

Reported by Martin WILMING

BIBLIOGRAPHY

Die Schweizerische Post AG (Swiss Post)
./.
Swiss Federal Institute of Intellectual Property (IPI)

Panel of Judges:

  • David ASCHMANN
  • Daniel WILLISEGGER
  • Marc STEINER

Court Clerk:

  • Claudia WALZ

Representative(s) of Swiss Post:

DECISION IN FULL

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Clash of the Ottos

No patent case this time. But if you are more broadly interested in IP in general, and in trademark and unfair competition issues in particular, then this post is for you!

The German Otto Group and the Swiss retailer Otto’s are fighting over Geman Otto’s right to use the trademark ‘OTTO’ for distant selling over the internet in Switzerland.

Little time? Read the summary.

First, let’s get the setup straight:

  1. The parties

i)   The ‘Swiss Otto’

Otto’s AG is a well-known Swiss retailer that has been founded in 1978. To avoid any genitive issues in the following, I will just refer to it as the Swiss Otto, vis-à-vis the German Otto. To the best of my knowledge, the Swiss Otto is only active in Switzerland, with currently more than 2’000 employees and about 100 stores. The Swiss Otto generated an overall turnover of about CHF 649M in 2015.

E-commerce and distant selling currently only account for 1-2% of Swiss Otto’s turnover, but still it is considered of ‘high strategic value’.

Plaintiff’s logo

Swiss Otto’s first trademark application was 2P-453413 (OTTO’S WARENPOSTEN), filed 20 March 1998. Later, the phrase OTTO’S was singled-out in the trademark application 2P-462929 (OTTO’S), filed 21 April 1999. A figurative trademark with the upright finger has then been filed on 30 December 1999; P-473105 (OTTO’S (fig.)).

ii)   The ‘German Otto’

Defendant’s logo

The Otto Group, or Otto GmbH & Co KG (formerly Otto Versand), is based in Hamburg (Germany) and is widely known as a distant selling company. Purportedly, it is currently the world’s second biggest e-commerce group of companies.

The German Otto has a very old trademark IR 218534 (‘OTTO-VERSAND’), registered on 28 March 1959 and with protection in Switzerland since 1 May 1979. Yet another trademark IR 616349 (‘OTTO’) has been registered on 14 December 1993 with protection in Switzerland since 20 June 1994.

Further, the German Otto filed national trademark applications 2P-423133 (‘OTTO-VERSAND’) and 2P-423132 (‘OTTO’) in Switzerland on 20 July 1994; both were granted on 25 March 1996 and specifically pertain to distant selling (‘Versandhandel’) in class 42.

  1. How did they get along in the past?

The German Otto had entered the Swiss market in 1996 with the takeover of Jelmoli Versand AG, still trading as jelmoli-shop.ch. German Otto’s further online businesses in Switzerland include quelle.ch and ackermann.ch. All these online businesses in Switzerland account for a combined annual turnover of 400M. However, the brand OTTO had never been used in Switzerland; the URLs otto-shop.ch (Whois), otto-versand.ch (Whois) and ottoversand.ch (Whois) currently redirect to jelmoli-shop.ch.

  1. What went wrong?

The German Otto approached the Swiss Otto in September 2016 and indicated the intention to use its brand OTTO on the Swiss market in connection with distant selling over the internet, and that a friendly co-existence  with the Swiss Otto should be possible; see ¶4.1.4 of the first instance decision:

[Otto DE] vermute, dass [Otto CH] keine Freude haben werde, wenn [Otto DE] in der Schweiz vergleichbar mit [ottoversand.at] einen Onlineshop eröffnen werde. Dies sei aber rechtlich geprüft und aufgrund der Markenrechtssituation als rechtlich möglich erachtet worden. Es werde aber kein Alleingang in Aussicht genommen, sondern eine friedliche Koexistenz in dem Sinne angestrebt, dass jeder seine Sortimente in seiner Zielgruppe online vermarkte.

Swiss Otto did not agree, but rather suggested that the German Otto could use its German TLD also for the Swiss market, i.e. otto.de/ch (currently resulting in a 404 errror message; last checked 05 April 2018). That was apparently not acceptable for the German Otto, and he indicated to enter the Swiss market with the URL otto-shop.ch most likely in the second half-year of 2017. This is also in accordance with reports e.g. here and here.

At that point, the Swiss Otto could obviously no longer agree with German Otto’s well-known slogan:

German Otto’s slogan (loosely translated: Otto … I like it.)

Swiss Otto filed his writ on 7 April 2017 with the Cantonal Court Lucerne, together with a request for interim measures provisionally prohibiting German Otto’s use of ‘OTTO’ or ‘OTTO-VERSAND’ in connection with distant selling in Switzerland.

The currently available judgments of the Cantonal Court Lucerne and the Supreme Court only relate to the requested interim measures. Main proceedings are most likely still pending.

  1. The summary judgment

The summary judgment holds that it is plausible by prima facie evidence that the brand awareness in Switzerland is much higher for the Swiss Otto vis-à-vis the German Otto. The judgment further holds that it is plausible that actual confusion of the two Ottos could occur.

It was apparently beyond dispute that the assortments of goods, ways of sales promotion and price levels are at least partly similar. Moreover, the websites show some similarities, e.g. in terms of navigation and the red color:

The German Otto undisputedly has the older trademarks in Switzerland. Still, it did never actively use these trademarks. The Swiss Otto did. With reference to the decision BGE 129 III 353 (¶ 3.3) of the Supreme Court, the Cantonal Court Lucerne held that the owner of a trademark may well be bared from actually using the trademark under certain conditions, based on the Unfair Competition Act.

Reverting to the aspect of potentially unfair competition, the decision provisionally holds that a risk of confusion of the two trademarks is given. Further, Swiss Otto appears to have a market position worthy of protection. In sum, Swiss Otto’s prospects for the case under Art. 3(1) lit. d UCA appeared prima facie reasonably promising.

Zusammengefasst erscheint der Verfügungsanspruch als einigermassen aussichtsreich, jedenfalls nicht als aussichtslos und ist folglich zu bejahen. […] Die Hauptsachenprognose fällt damit zu Gunsten der Gesuchstellerin aus.

The court held that there is a threat of an irreparable harm for the Swiss Otto if the interim measures were not issued. On the contrary, it did not appear of much relevance for the German Otto to just wait a little longer before actively using his trademark OTTO in Switzerland and to rely instead on his other brands while main proceedings are still pending – as he did so all along.  Urgency was apparent, in view of German Otto’s  announced market entry.

Thus, the German Otto was provisionally ordered to abstain from distant selling in Switzerland with the trademarks OTTO or OTTO-VERSAND.

  1. What remains to be clarified in main proceedings

The first instance judgement explicitly points to the following issues that need to be assessed in further detail in main proceedings:

i)   Do Swiss Otto’s trademarks also cover distant selling over the internet?

This has provisionally been answered in the affirmative, but note that only German Otto’s trademarks of 1994 explicitly recite such services in class 42; see above.

ii)  Are German Otto’s trademark rights forfeited?

The decision provisionally holds that this is definitely not unlikely (‘jedenfalls nicht unwahrscheinlich’).

iii)   The Agreement between Germany and Switzerland

The Agreement of 1894 between Germany and Switzerland essentially concerns a reciprocal recognition of the use of a trademark in the home country also for the respective other country. But does this legal fiction of a use in Switzerland also provide sufficient basis for a use-based defense? This remains to be seen in main proceedings.

  1. The Supreme Court’s view on the interim measures

The German Otto lodged an appeal to the Supreme Court, inter alia alleging a formal denial of justice by deferring the assessment of the agreement between Germany and Switzerland to main proceedings, even though this legal aspect of the case was allegedly simple and easily comprehensible (‘einfach und leicht verständlich’). The Supreme Court did not agree, in particular with reference to the judgment C-445/12 P of the European Court of Justice that also dealt with aspects of the legal scope of this Agreement.

Yet further grounds of appeal, such as arbitrariness, were of no avail, either. The appeal was dismissed.

Reported by Martin WILMING

BIBLIOGRAPHY

OTTO’S AG
./.
UNITO Versand & Dienstleistungen GmbH

Cantonal Court Lucerne:
1F 17 3 ¦ Decision of 14 August 2017

Judge:

  • Robert THALMANN

Court Clerk:

  • Peter ARNOLD

Supreme Court:
4A_500/2017 ¦ Decision of 12 February 2018

Judges:

  • Dr. Christina KISS
  • Dr. Kathrin KLETT
  • Dr. Fabienne HOHL
  • Dr. Martha NIQUILLE
  • Marie-Chantal MAY CANNELAS

Court Clerk:

  • Dr. Matthias LEEMANN

Representative(s) of OTTO’S:

Representative(s) of UNITO:

CANTONAL COURT LUCERNE

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SUPREME COURT

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SUMMARY

The German Otto has older trademark rights in Switzerland than the Swiss Otto, but never actually used them on the Swiss market. The Lucerne Cantonal Court issued interim measures based on the Unfair Competition Act and ordered the German Otto to abstain from using his trademarks OTTO and OTTO-VERSAND in Switzerland while main proceedings are still pending. An appeal was dismissed by the Supreme Court. Outcome in main proceedings needs to awaited.

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