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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Large date indication of De Grisogono’s “Instrumento Grande”: Patented, yet held to infringe

De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)

Case No. O2012_033 ¦ Decision of 30 January 2014 ¦ “Conclusions; fardeau d’allégation; double protection”

HEADNOTE

(Official version in English language)

1.  Art. 72 PatA:
Request for an order to cease and desist a patent infringement.

For a request for an order to cease and desist a patent infringement to be admissible it must contain a detailed description of the incriminated act. This description must be sufficiently specific such that a purely factual examination is sufficient to determine whether an act is prohibited. A description which requires a legal qualification or the interpretation of ambiguous technical expressions is insufficient. A request for an order can therefore be limited to the wording of a patent claim only if the wording of the patent claim itself fulfils these requirements (r. 17).

2.  Art. 26 PatA; Art 8 CC:
Burden of allegation if a party raises a ground for nullity of a patent.

If a party raises a ground for nullity the assessment of which involves the skilled person [and] his common general knowledge, this party bears the corresponding burden of allegation, i.e. it must specifically name the skilled person (defined according to education and/or profession) and his common general knowledge (in particular the extent of the pertinent technical knowledge supposed to be known to him at the relevant date). If such a specific allegation is not put forward the ground for nullity will be dismissed (r. 19-20 and 31-32).

3.  Art. 125 PatA; Art. 51PatA:
Prohibition of double patenting.

The loss of effect of the Swiss patent due to the existence of a European patent for the “same invention” with the same effective date according to Art. 125(1) PatA is subject to the condition that the same technical teaching is protected by the claims of both patents (r. 37).

1.  Procedural History

Richemont International S.A. had sued De Grisogono S.A. for patent infringement before the Civil Court of the canton of Geneva on 15 July 2008. The defendant delivered his answer on 04 November 2008 (the year 2011 given in the decision on p.6 is evidently a typo), argued for non-infringment, lodged a counterclaim for nullity of the patent in suit and requested that the infringemenent action be held an act of unfair competition. As an auxilliary measure, the defendant requested to appoint an expert. With his reply of 30 January 2009, the plaintiff inter alia requested that three experts were to be appointed. The rejoinders were filed on 27 April 2009 (defendant) and 12 July 2009 (plaintiff), respectively.

Finally, three experts were appointed: René BESSON (horologist), Ronald NOLL (patent attorney) and René ADDOR (horologist). BESSON and NOLL submitted a joint opinion on 05 April 2011; ADDOR completed his opinion on 13 June 2011.

The Civil Court of Geneva decided to transfer the case to the Federal Patent Court on 26 January 2012. The parties were invited on 23 October 2012 to comment on the two expert opinions. They filed their comments on 14 January 2013, and the plaintiff put the competence of the FPC into doubt. The main hearing took place on 05 November 2013 (extra muros in Fribourg).

2.  The patent in suit

The patent in suit is CH 695 712 A5 of Richemont International S.A.; for bibliographic details and legal status, see Swissreg. In brief, independent claim 1 pertains to a mechanism to display a date from two separate numbers, comprising

a first annulus (1) with a first set of digits and a toothing at its inner circumference to drive it;

a mobile (9,10) with a plate (9) comprising a second set of digits and a part (10) with a multitude of teeth and wherein the plate (9) is partially arranged on top of the first annulus; such that at each stable position of the first annulus (1) and the mobile (9,10) a digit of the first annulus (1) and a digit of the mobile (9,10) are arranged side by side in a frame or two parts (2,13) of a frame;

characterized in that the mobile (9,10) is pivot-mounted outside of the first annulus (1) and wherein the first annulus (1) comprises a toothing (14) also at its outer circumference, interacting with the teeth of part (10).

For ease of reference, an illustrative figure and the original claim wording in French language is given below:

O2012_033_illustration_patent_in_suit

The mechanism can be best understood on the basis of Fig. 1-3 of CH 695 712 A5 (excerpts of which are given below) showing the sequence of a date switch:

Excerpts from Fig. 1 (left), 2 (middle) and 3 (right) of CH 695 712 A5
Excerpts from Fig. 1-3 of CH 695 712 A5
3.  The incriminated watches

Two de GRISOGONO watches were incriminated, i.e. Instrumento Grande and Instrumento Grande Open Date. A key feature of both these watches is the large date indication (at 6-position in the pictures below):

De Grisogono: Instrumento Grande (left) and Instrumento Grande Open Date (right)
Instrumento Grande (left)
Instrumento Grande Open Date (right)

An annotated picture of one of these watches had been filed by the plaintiff, for illustrative purposes:

instrumento_grande_open_date_-_annotated
Instrumento Grande Open Date, annotated by the plaintiff (taken from p. 5 of the decision).
4.  What has been decided
4.1  Competency of the FPC

According to Art. 41 PatCA, the Federal Patent Court shall, where it is competent, adjudicate in cases that are pending before the cantonal courts, provided that the main hearing has not yet been held. The procedure of taking evidence had not yet been concluded, and no main hearing had taken place. Thus, the cantonal court referred the case to the FPC.

On the subject matter of the case, the competency of the FPC is evident (Art. 26 PatCA).

4.2  Wording of the requests

The wording of the request essentially recites the wording of the only independent claim 1 of the patent in suit. Don’t assume that this is typically the case. Formal requirements for such requests are harsh and sometimes difficult to meet in view of the decision 131 III 70 of the Supreme Court. For a request for an order to cease and desist a patent infringement to be admissible it must contain a detailed description of the incriminated act. This description must be sufficiently specific such that a purely factual examination is sufficient to determine whether an act is prohibited. A description which requires a legal qualification or the interpretation of ambiguous tehcnical expressions is insufficient. A request for an order can therefore be limited to the wording of a patent claim only if the wording of the patent claim itself fulfils these requirements. This was held to be the case here. (But beware: It is more an exception than the rule that recitation of the claim wording is sufficient.)

4.3  On the merits of the patent

Besides the alleged infringment of CH 695 712 A5 (see 4.4, below), the FPC had to deal with validity issues since the defendant raised a counterclaim of invalidity (see 4.3.1 to 4.3.4, below). Note that Swiss patent applications are only formally examined but not on the merits, i.e. for novelty and inventive step. (A pre-examination on the merits had been introduced for certain inventions in the textile and watch industry with an amendment of the PatA in 1954, but this has been abolished again in 1996.)

4.3.1  Alleged undue extension of subject-matter

The amendments carried out during prosecution are discussed in the decision on the basis of the claim wording with tracked changes:

Amendments CH 695 712

The amendments were found to be clearly and unambiguously derivable from the documents as filed. In any case, this would not have been a ground for nullity under Art. 26(1) c PatA, but would rather have resulted in a shifted filing date (Art 58(2) PatA effective until June 30, 2008; BGE 4A_109/2011 / 4A_111/2011, r. 4.1).

As a sidenote, the FPC emphasized that it is the understanding of the person of routine skill in the art that counts for assessment of the question of whether or not an amendment goes beyond of what can be clearly and unambiguosly derived from the application as filed. Thus, the person of routine skill in the art is to be identified beforehand, typically by means of his profession and/or education. Providing this definition is an obligation of the party who raises an argument or counterclaim that relies on the knowledge of the person of routine skill in the art. The defendant did not do so but rather only gave a general definition without any context to the technical matter at stake.

4.3.2  Novelty

The defendant alleged a lack of novelty of the patent in suit over the following documents:

i)  CH 316 461 (Valjoux)

As can be concluded from Fig. 1 of the Valjoux patent (below, for ease of reference), the disk carrying the first series of digits (the upper disk in fig. 1) is not in the form of an annulus (couronne). Consequently, there is also no disclosure of an inner and outer toothing on the (missing) annulus. Novelty over the Valjoux patent was thus acknowledged.

Fig. 1 of CH 316 461 (Valjoux)
Fig. 1 of CH 316 461 (Valjoux)

ii)  CH 689 601 A5 (Piguet)

Piguet discloses an annulus for the first series of digits, but without any outer toothing (but rather only two inner toothings). Moreover, the mobile (carrying the digits 0-3) is not is pivot-mounted outside of the annulus. Novelty over the Piguet patent was thus acknowledged. See Fig. 2 of the Piguet patent below, for ease of reference:

Fig. 2 of CH 689 601 A5 (Piguet)
Fig. 2 of CH 689 601 A5 (Piguet)

iii)  EP 529 191 B1 (Jaeger-Le Coulte)

This piece of prior art was not alleged by the defendant in order to challenge novelty or inventive step (but rather only in the context of the alleged undue extension of subject matter). Nevertheless, ADDOR had discussed this document also for patentability issues — and the plaintiff did not object. Anyhow, novelty over the Jaeger-Le Coultre patent was acknowledged by the FPC: The mobile (carrying the digits 1-3) is not pivot-mounted outside of the annulus. Moreover, there is no outer toothing on the annulus that interacts with the toothing of the mobile. See Fig. 1 of the Jaeger-Le Coultre patent below, for ease of reference:

Fig. 1 of EP 529 191 B1 (Jaeger-Le Coultre)
Fig. 1 of EP 529 191 B1 (Jaeger-Le Coultre)

iv)  JP 44-20619 (Aichi Tokai Denki)

This document had not been relied on by either of the parties. ADDOR had identified it in a search which had not been authorized or instructed by the FPC. Even worse, he came up with this document only two months after he had initially provided his opinion. The plaintiff could have objected against consideration of this document, but did not do so. Anyhow, novelty over the Aichi Tokai Denki patent was acknowledged for essentially the same reasons as outlined for the Valjoux patent above: It does not disclose an annulus being driven by an inner toothing and interacting with a mobile by means of an outer toothing.

Unfortunately, I could not find a pdf of this document, but at least the figure given in the decision is shown below for illustration purposes:

Figure of JP 44-20619 (Aichi Tokai Denki)
Figure of JP 44-20619 (Aichi Tokai Denki)
4.3.3  Inventive step

The FPC assessed the inventive merit on the basis of the so-called problem-and-solution-approach (see EPO Guidelines for Examination, G-VII, 5). The objective technical problem to be solved was identified in a simplification of the mechanism and a reduction of the number of pieces (see paragraphs [0005] and [0006] of CH 695 712 A5). There was no apparent incentive for the person of routine skill in the art to arrive at the claimed invention in an obvious manner; thus, the could-would-approach failed and inventive step was acknowledged.

4.3.4  Double patenting

The plaintiff is also owner of EP 1 296 204 B1. The European application and the Swiss patent CH 695 712 A5 had been filed on one and the same day, with apparently the same documents. However, the resulting scope after prosecution was different in both cases (I did not yet make a detailed comparison of the claim wordings). Thus, the FPC held that both patents are not directed to the same invention and therefore Art. 125 PatA does not apply.

4.3.5  Infringement

The report BESSON/NOLL came to the conclusion that the patent in suit is infringed. From the report ADDOR, the FPC took the same conclusion (albeit implicitly). Taking both reports into due consideration, the FPC followed the conclusions drawn by BESSON/NOLL.

The primary counter-argument of the defendant was that the (let’s call it) structure 3 in the figure below was not an external toothing (“denture périphérique externe” in the original claim wording in French).

Fig. 1 of EP 1 612 628 B1
Fig. 1 of EP 1 612 628 B1 (De Grisogono); this mechanism is embodied in the incriminated watches.

The ADDOR report provided the following illustration of the technical term tooth (dent; left side) and gudgeon (ergot; right side):

Illustrations of technical terms by the expert Addor: dent (left); ergot (right)
Illustrations of technical terms by the expert Addor: dent (left); ergot (right)

The FPC was not at all convinced that the so-called ergot was not a tooth. In fact, even in EP 1 612 628 B1 itself the structure 3 is referred to as a tooth (dent); see paragraph [0010]. The FPC held that also a single tooth constitutes a toothing according to the patent in suit.

5.  In a nutshell

The defendant was ordered to cease and desist from using the invention, and to report on the sales figures of the infringing devices within a deadline of 60 days. The counterclaims of the defendant were dismissed. The decision can be appealed within 30 days.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2012_033 ¦ Decision of 30 January 2014 ¦ “Conclusions; fardeau d’allégation; double protection”

Richemont International S.A. ./. De Grisogono S.A.

Subject(s):

  • Infringement and nullity
  • Unfair competition
  • “Couronne dentée”

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Dr. Tobias BREMI (Judge)
  • Frank SCHNYDER (Judge)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • Maître Michel MUHLSTEIN (JMLP)

Representative(s) of Defendant:

Full text of the decision right here:

Download (PDF, 723KB)

Beware of missing the right time for submitting evidence

Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

1. Background of the case

The parties are anonymised in the present decision (B. GmbH ./. Z. SA). However, the underlying patent is identified (WO 2005/018848).

From a brief review of the patent family, the parties become immediately apparent. In the European phase of the aforementioned PCT application, proceedings are stayed on request of Benteler Automobiltechnik GmbH. This company had sued Z.A.T. Zinc Anticorrosion Technologies SA for partial assignment to co-ownership of the patent application in suit. The writ of 09 February 2009 is available online; it was annexed to the request for interruption of proceedings.

Note that the former applicant of WO 2005/018848 (DaimlerChrysler) had assigned the application to Z.A.T. Zinc Anticorrosion Technologies SA.

For more infomation, please check the file wrapper (online at the EPO).

2. Procedural aspects at stake

Ordinary exchange of written submissions was as follows (submissions with respect to the counterclaim are underlined):

Plaintiff Defendant
i) Writ
(09 February 2009)
ii) Answer ¦ Counterclaim
(29 May 2009)
iii) Reply ¦ Answer
iv) Rejoinder ¦ Reply
(28 February 2013)
v) Rejoinder*
(13 May 2013)

* expressly only commenting on the reply of the defendant of 28 February 2013.

With letter of 14 May 2013, the FPC informed the parties that the exchange of written submissions was finished. However, with letter of 23 May 2013 the plaintiff then expressed his surprise that he was given no further opportunity to comment on facts and evidence raised by the defendant in the rejoinder of 28 February 2013. In the plaintiff’s view, the defendant had denied the plaintiff’s right of action in the rejoinder of 28 February 2013 for the first time. “For the sake of completeness”, the plaintiff submitted assignment agreements signed by the respective inventors back in 2009. Note that the plaintiff had already named these inventors in the writ of 09 February 2009 (marg. no. 17 of the writ). The defendant requested that this submission of the plaintiff be held formally inadmissible; moreover, correctness on the merits was also denied.

First, the FPC held that the plaintiff’s submission of 23 May 2013 was no submission of new facts or evidence in the sense of Art. 229(1) lit. a or b CPC. In contrast, the plaintiff’s intention was obviously to comment on an aspect of the rejoinder of 28 February 2013.

With respect to the initial writ, the ordinary exchange of written submissions was concluded with the rejoinder of 28 February 2013. Only the rejoinder in the counteraction was outstanding, and the FPC accordingly had only set a time limit for this rejoinder. Nevertheless, the plaintiff had the mandatory right to also comment on the rejoinder of 28 February 2013 (“unbedingtes Replikrecht”); no time limit needs to be set by the Court (cf. BGE 138 III 252, r. 2.2; BGE 133 I 98, r. 2.2 and a memorandum of the Supreme Court). However, one has to act immediately in order to safeguard this right. Otherwise, it is deemed that the respective party has abstained from making a further submission. In the present matter, 2 ½ months had lapsed since the plaintiff was served with the rejoinder of the defendant. The FPC held that this was clearly not an immediate action being taken by the plaintiff. Consequently, the FPC excluded the plaintiff’s submission of  23 May 2013 (incl. the assignment agreements) from further consideration, as well as the defendants comments thereon.

As a sidenote, the FPC held that even an immediate comment on the rejoinder of 28 February 2013 would not have helped the plaintiff: The right in the invention had already been discussed in the writ of 09 Februar 2009, and the inventors were already named at that time. The defendant had contested these allegations already in his answer of 29 May 2009. Therefore, this was not a new issue raised only in the rejoinder of 28 February 2013 by the defendant.

Next, the parties will be summoned to the main hearing. The FPC stressed that the parties will then only be allowed to present new facts or evidence in the sense of Art. 229(1) CPC. In view of the above, the plaintiff will thus not be heard anymore with respect to the facts and evidence raised in his submission of 23 May 2013.

Reported by Martin Wilming

BIBLIOGRAPHY

Case No. O2012_001 ¦ Order of 24 July 2013 ¦ “Frist zur Wahrung des unbedingten Replikrechts”

Benteler Automobiltechnik GmbH ./. Z.A.T. Zinc Anticorrosion Technologies SA

Subject(s):

  • Patent law / Unfair competition

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President)
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

Representative(s) of Defendant:

Full text of the decision right here:

Download (PDF, 20KB)

 

No interim measure of declaratory judgement with respect to ownership of a patent

Case No. S2012_005 ¦ Decision of 13 June 2012 ¦ “Zulässigkeit eines Feststellungsbegehrens, unlauterer Wettbewerb”

In 2005 the plaintiff entered into an R&D contract with a professor (now defendant). The purpose of this contract was the development of a technology to provide highly porous pellets by using a liquefied propellant gas. More specifically, the envisaged R&D should include experiments concerning the solubility of certain binding agents in various propellants, with or without CO2. According to the contract, it was aimed to subsequently file patent applications based on such R&D; the plaintiff should be the patentee and the defendant should be named as the inventor. The defendant also agreed in the contract to offer any further idea in the field of the experiments (propellant gas technology) to the plaintiff.

The dispute pertains to a European patent later on filed by and granted to the plaintiff, entitled

Manufacturing of a rapidly disintegrating presentation starting from a solid powder and a step of freeze drying

Entitlement of the plaintiff to this European Patent was under dispute between the parties. The defendant denied that the R&D contract (focused on propellant technology) covered the subject matter of the European patent in suit.

A first aspect of this decision pertains to the competency of the FPC, since the plaintiff was domiciled in Switzerland while the defendant was domiciled in Germany. The R&D contract contained a choice of juridiction clause (seat of the plaintiff), in accordance with Art. 23(1) lit. a-c LugC, but applicability of the contract to the present subject matter was under dispute. The patent in suit was not put on file by the parties, and it could not be excluded a priori that the patent was also covered by the contract: The mere title as such does not rule out the use of a liquefied propellant. The FPC held that for deciding on the competency of the court, allegations made by the plaintiff which are of relevance for both the competency of the court and the justification of the complaint are to be assumed true; this is in line with the case law of the Federal Supreme Court (BGE 137 III 32, r. 2.2 and 2.3).

As to the merits of the case, the first request was in fact a request for declaratory judgement by interim measure. The FPC held that declaratory judgements ad interim are not available under Art. 262 CPC in cases pertaining to the ownership of intellectual property rights. The FPC did not consider the first request already for this reason. Moreover, the plaintiff did not even address the question of his legitimate interest in this declaratory judgement (as required by Art. 74 of the Federal Act on Invention Patents) – the request would not have been considered by the FPC for this reason, too. Finally, the plaintiff failed to address the threat of a not easily reparable harm (Art. 261 CPC); this would have led to dismissal of the request by the FPC (if it had been considered).

A second request was that the defendant should be obliged to refrain from any statements vis-a-vis third parties that the plaintiff was not the legitimate owner of the patent in suit. The FPC held that the plaintiff did not provide sufficient prima facie evidence of violation of a right to which he is entitled (Art. 261 CPC); no legal basis for his claim was indicated by the plaintiff. The statements made by the defendant were also held to not establish a case of unfair competition. As long as a statement of a subjective legal opinion is not unnecessary offending, it cannot establish a case of unfair competition:

Die erkennbar als eigene Rechtsauffassung gemachte Äusserung ist als Werturteil nur dann unlauter, wenn sie unnötig verletzend ist (BGE 93 II 140 ff.; 108 II 225; BGer 4P.183/1995, sic! 1997, 414 E. 5d; Spitz, RZ 57 zu Art. 3 lit. a UWG).

Reported by Martin WILMING and Jennifer BOESE

BIBLIOGRAPHY

Case No. S2012_005 ¦ Decision of 13 June 2012 ¦ “Zulässigkeit eines Feststellungsbegehrens, unlauterer Wettbewerb”

(not identified) ./. (not identified)

Subject(s):

  • Interim measures

Composition of the Board of the FPC:

  • Dr. iur. Dieter BRÄNDLE (President, Chairman)
  • Dr. rer. nat. Tobias BREMI (Judge)
  • Dr. iur. Ralph SCHLOSSER
  • Lic. iur. Jakob ZELLWEGER (First Court Secretary)

Representative(s) of Plaintiff:

  • Christoph Daniel MAIER (Fromer)

Representative(s) of Defendant: