Protection file

The end of the trademark protection agreement between Switzerland and Germany – New (and old) obstacles to proof of genuine use of trademarks

On June 1, 2022, the 130-year-old German-Swiss cooperation in the protection of intellectual property will come to an end: Germany has denounced the agreement of April 13, 1892 between Switzerland and Germany concerning the mutual protection patents, designs and trademarks. , from May 31, 2022. This has significant consequences for one or the other holder of German or Swiss intellectual property rights.

Use of the mark in Switzerland = Use of the mark in Germany

The core of the bilateral agreement between the neighboring states was that an industrial property right registered in Germany would be considered to have been seriously used, even if it was only used in Switzerland – and vice versa. The practical consequence, especially for trademark owners: despite the absence of use of the trademark registered in Germany on German territory, the trademark would not be threatened with cancellation due to revocation according to § 49 of the German Trademark Law (MarkenG) if it was instead used exclusively on Swiss territory.

The cancellation of the agreement was triggered by the “Testarossa” judgment of the ECJ in 2020 (ECJ, judgment of 22.10.2020 – C-720/18, C-721/18). The CJEU found that the 1892 agreement was incompatible with applicable EU law because the then applicable Article 8 of the Trade Marks Directive (Directive 2008/95/EC) provided that genuine use of a trade mark had to take place in the ‘Member State concerned’. Therefore, the use of a German trade mark in Switzerland could not have been sufficient. This decision forced Germany to end the long-standing agreement with Switzerland.

The essence of proof of genuine use of the mark

While it has been quite difficult for trademark holders to prove actual use of the trademark in cancellation proceedings so far, the termination of the German-Swiss agreement now puts an additional hurdle in their path. .

The recent decisions of the Fourth Board of Appeal of the CJEU in the Apple, Swatch and “THINK DIFFERENT” cases of June 8, 2022 (ECJ, Judgment of June 8, 2022 – T-26/21, T-27/21, T- 28,21) show how difficult it can be, in individual cases, to convince the court of the genuine use of a mark by means of the evidence presented: in August 2018, at the request of Swatch AG, the ‘EUIPO has decided that the European trademark “THINK DIFFERENT” registered for Apple Inc. has lapsed for lack of serious use. Apple appealed this decision to fail miserably. The CJEU lacked a “body of evidence” that Apple had used the mark on the territory of the European Union (!) in a way that had preserved its rights. Among other things, the technology company presented net sales figures for worldwide sales (!), which were (rightly) not sufficient for the court in the absence of a concrete European reference for these figures. Newspaper articles dating back ten years indicating use of the mark were also not sufficient evidence.

In the past, the EUIPO and the Board of Appeal of the ECJ had already attributed rather low probative value to mere statements by trademark owners or their employees, so that in future trademark owners would also have to pull out all the stops for sufficient proof of genuine use of a trademark to escape the loss of their intellectual property assets.

What brand owners need to do now

The termination of the German-Swiss agreement will probably only become really relevant from May 31, 2027, because its termination will probably not apply retroactively, and owners of German or Swiss brands can still rely on the use in the respective neighboring country. for the period prior to June 1, 2022. This is also the position taken by the Swiss Federal Institute for Intellectual Property – the Swiss counterpart of the German Patent and Trademark Office (DPMA) – in its press release. Nevertheless, trademark owners should consider establishing use of their trademark in the country of registration or submitting a new trademark application at an early stage if they have exclusively based use of their trademark in the past. on use in the former Contracting State. In order to avoid any difficulties of proof in the manner of Apple in the future, that is to say often unpredictable cancellation procedures, the use of a mark must be constantly and carefully documented.