Genuine use of a trademark when used differently than registered (Decision B-3056/2012 of June 4, 2014 of the Swiss Administrative Court – “Artic”)


Your contact

ThoCon AG filed the Swiss trademark ARTIC VELVET for inter alia beverages in Nice classes 32 and 33. ILLVA SARONNO SPA filed opposition against this trademark based on an older international figurative trade mark (see below), which is registered in Switzerland for beverages (Nice classes 32 and 33).


Mark as registered (with polar bear element)

The trade mark have been used in Switzerland for spirits (vodka) in a slightly different graphic form (without the graphic element of the polar bear, depicted below).The Federal Institute of Intellectual Property held that the use in the different form did not amount to genuine use of the registered marks and dismissed the opposition.


Sign actually used on products

On appeal the Federal Administrative Court confirmed that the older trade mark had only been used in a significantly different form than registered, leading to the conclusion that the registered mark had not been genuinely used and was unenforceable.

The court considered that the term ARTIC was weakly distinctive for the goods in question. While not identical with the Italian word „artico“, which means “arctic”, the Italian speaking consumers would still associate “ice cold” or the “North Pole” with the term when seeing the term ARTIC in connection with (alcoholic) beverages, and “ice cold” was descriptive for the state beverages such as vodka are best served.

Such understanding in just one language of Switzerland is sufficient to weaken the distinctive character of a trademark. Additionally, German and French speaking customers in Switzerland might understand the allusion. The allusion to “cold” is further supported by the stylized polar bear. At the same time the court holds that the graphical element of the polar bear complements the comparative lack of distinctiveness of the word element, which means that the word element and the graphical element together establish the trademark’s distinctiveness.
Consequently, the court stated that the use of a sign without one of these elements leads to a different overall impression. The owner of the older mark could only demonstrate use of the word element “ARTIC” and hence was not able to prove the trade mark’s genuine use. The owner of the older mark could also demonstrate that on bottles that have been sold in Switzerland, a drawing of a polar bear had been placed next the word element ARTIC. According to the court, this was still insufficient to amount to genuine use of the mark as registered.


Share post



most read


Highlights

MLL Legal

MLL Legal is one of the leading law firms in Switzerland with offices in Zurich, Geneva, Zug, Lausanne, London and Madrid. We advise our clients in all areas of business law and stand out in particular for our first-class industry expertise in technical-innovative specialist areas, but also in regulated industries.

MLL Legal

Newsletter

Much is still unclear in relation to liability questions around AI tools.

Read our latest post about “Liability during the Lifecycle of an AI Tool” and download our white paper.

Show article.

Our Story

MLL Legal is a leading Swiss law firm with a history that dates back to 1885. The firm has grown both organically and by means of strategic mergers, the latest of which took place on 1st July 2021 between Meyerlustenberger Lachenal and FRORIEP.

The merger establishes MLL Legal, a combined new entity as one of the largest commercial law firms in Switzerland with 150 lawyers in four offices in Switzerland and two offices abroad, in London and Madrid serving clients seeking Swiss law advice.

Our firm has a strong international profile and brings together recognised leadership and expertise in all areas of law affecting commerce today, with a focus on high-tech, innovative and regulated sectors. 

About us

Publications

Click here for our latest publications

COVID-19

Read all our legal updates on the impact of COVID-19 for businesses.

COVID-19 Information

Job openings

Looking for a new challenge?

Our talented and ambitious teams are motivated by a common vision to succeed. We value open and straightforward communication accross all levels of the organisation in a supportive working environment.

Job openings

Firm News

Click here for our latest firm news.

Our Team

The regulatory and technological landscape continually require businesses to adapt and evolve.
Our 150+ lawyers are continuously innovating and striving for improvement in everything they do. We embrace new ideas and technologies, combining our wealth of expertise with creative thinking and diligence. With our hands-on approach, we implement viable solutions for the most complex legal challenges.

Our Team.

LexCast – the podcast series by MLL NexGen

Smart legal education on the go. The LexCast hosted by MLL NexGen provides legal insights in a short format that allows listeners to educate themselves on and about legal issues wherever they are and whenever they find the time.

Listen to our podcast series – stay tuned.

MLL Legal on Social Media

Follow us on LinkedIn.