AIPPI Q281-SGL-TM-2022 – Trademarks and the Internet and Social Media

Members of the working group: Manuel Bigler (chair), Sarah Drukarch, Dr. Gallus Joller, Dr. Pierre-Alain Killias, Dr. Raphael Nusser

The english translation of the summary is included on Swisslex and legalis only.

In your Group’s current laws or regulations, are there any provisions that specifically concern trademark protection on the internet or social media? Please answer YES or NO. If YES, please list these.

No.

Is there any authority in the country or region of your Group which deals with trademark infringement matters on the internet or social media, which is different from the authority for traditional off-line trademark infringement matters? Please answer YES or NO. If YES, please specify which.

No.

Is there any special mechanism/procedure available in the country or region of your Group to handle trademark infringement matters on the internet or social media? Please answer YES or NO. If YES, please clarify which.

No.

What ways of use of a trademark on the internet and social media might constitute trademark infringement if there is no permission from the trademark owner? Please choose one or more answers from the following choices:

a) use to sell a product or service online;

b) use as a keyword (in a search engine or ranking at a platform);

c) use as a metatag;

d) use as a hashtag;

e) use in a review posting;

f) use as the name of a social media account or an online shop name;

g) use for a comparison;

h) use to endorse or promote another party’s product or service;

i) other, namely ___________________

In general, for a trademark infringement to occur under Swiss Law – be it in the analogue or digital world – it is required that the infringing sign is used as a distinctive sign, in commerce, for identical or similar goods or services, leading to a likelihood of confusion (see Art. 13 Trademark Protection Act, TMA). In the case of famous trademarks, an infringement may occur in relation to any kind of goods or services if such use endangers the distinctive character of the trademark or takes advantage of, or is detrimental to, its reputation (see Art. 15 TMA). Whether a court will consider a use of a sign as a trademark infringement in an individual case, depends on the specific circumstances as well as the actual use in the case at hand. However, private or purely informative use does not constitute a trademark infringement.

Furthermore, in case a use does not constitute trademark infringement, a separate assessment with regards to a potential violation of unfair competition law needs to be carried out, which is subject to the separate Unfair Competition Act (rather than the TMA). The result under unfair competition considerations (e.g. as regards an unfair exploitation of reputation) may ultimately differ from the assessment under trademark law, bearing in mind that unfair competition considerations provide for a distinct field of use under Swiss law. In the digital sphere, copyright law (e.g. the of use of logos, image elements or protected text) or the law relating to the use of a name are also frequently affected. For the purposes of this Report, however, the Swiss Group will focus on considerations based on trademark law in its narrower sense.

In general, the following uses may constitute trademark infringement if no permission for such use has been granted by the trademark owner:

a) Use to sell a product or service online: Such use may constitute trademark infringement if the use is not merely informative. However, a use for the identification of the actual trademark owner’s offering (e.g. in the case of a reseller) will usually not constitute an infringement.

b) Use as a keyword: See below at 7).

d) Use as a hashtag: In particular, where a party’s products are promoted under a hashtag using a third party’s trademark, such use may amount to trademark infringement. Otherwise, the use of trademarks as hashtags is understood to be descriptive and thus permissible under Swiss law.

f) Use as the name of a social media account or an online shop name: Such use constitutes use as a distinctive sign (e.g. use as a company name) and may therefore constitute a trademark infringement. However, while the business-related context is given when the trademark is used as an online shop name, this is not necessarily the case when it is used as a name of a social media account (e.g. fan pages).

h) Use to endorse or promote another party’s product or service: In particular, where a third party’s trademark is used to identify the product or service, such use may infringe the third party’s trademark. A third party’s trademark may only be permissibly used in this context if it is indispensable to describe one’s own offering (e.g. in the case of spare parts or accessories to branded products).

e) Other, namely use in an e-mail address: Depending on the particular construction of an e-mail address, incorporating a third party’s trademark into an e-mail address may constitute use as a distinctive sign and, thus, lead to trademark infringement (sic! 2020, 629).

The following uses will usually not constitute trademark infringement if there is no permission from the trademark owner for such use:

c) Use as a metatag: Because a metatag is usually not visible to the website’s user, a metatag generally provides for a descriptive reference to the content of the website. Use of a third-party trademark as a metatag may thus only in very rare cases lead to a deception or misleading of internet users.

e) Use in a review posting: Such use is generally merely informative and will usually not result in a trademark infringement.

g) Use for a comparison: Such use is generally only considered trademark use with regards the third party’s products but not with regards to one’s own products, which are compared to the third party’s products. The decisive factor is that the third party’s trademark is perceived as the trademark for its own offering (as the trademark owner). Hence, such use will usually not result in a likelihood of confusion.

Are there any different tests applying to online trademark infringement compared with traditional offline trademark infringement? Please answer YES or NO. If YES, please state which.

No.

What factors are taken into account when assessing whether there is jurisdiction regarding the use of a trademark online (on a website or app)? Please choose one or more answers from the following choices:

a) whether the consumers in your country or region can access the website or app;

b) whether the server of the website or app is located in your country or region;

c) whether the website or app uses a local language of your country or region;

d) whether the website or app allows to pay in the local currency of your country or region;

e) whether goods/services are delivered to consumers in your country or region by the user of the trademark on that website or app;

f) whether there is any business facility of the user of the trademark in your country or region;

g) whether there are any promotional activities targeting consumers in your country or region by the user of the trademark;

h) other, namely _________________

In the context of this question, the Swiss Group understands the term «jurisdiction» to refer to the conditions under which online use is considered to fall within the territorial scope of a Swiss trademark, and not the conditions under which a Swiss court would consider itself competent to adjudicate a case concerning the infringement of a Swiss or foreign trademark.

For a Swiss trademark to be infringed, the use in question needs to take place in Switzerland. Online use is considered to take place in Switzerland if it has a commercial effect in Switzerland. This assessment requires a balancing of the interests of the user of the sign and the owner of the Swiss trademark, and has to be made on a case-by-case basis considering the specific circumstances of each case. The criteria set forth in WIPO’s Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet of 2002 may be taken into account. However, technical developments since then, namely the possibility of geoblocking, have to be considered in the balancing of interests, and these criteria need to be interpreted more broadly (sic! 2020, 629).

Accessibility of a website in Switzerland (lit. a) is a prerequisite for a use to be considered to take place in Switzerland, but is not in itself sufficient for a commercial effect in Switzerland. Criteria considered to determine whether there is a commercial effect in Switzerland may include: use of a local language on the respective website or app (lit. c), while use of a language commonly understood in Switzerland (e.g. English) does not count against a commercial use in Switzerland; payment possibilities in Swiss franc (lit. d); delivery of goods and services to Switzerland (lit. e); location of business facilities of the user of the sign in Switzerland (lit. f); promotional activities targeting consumers in Switzerland (lit. g); other factors (lit. h), including but not limited to disclaimers, use of a Swiss top-level domain (such as.ch and.swiss), offer of post-sales activities in Switzerland, indication of addresses, phone numbers or other contact details in Switzerland, or access to the site or app from Switzerland in the past.

It is not required that all of these criteria are met in order to assume a commercial effect in Switzerland, and other criteria may also be taken into account. Whether the commercial effect in Switzerland is stronger than in another jurisdiction is not decisive, meaning that a global website not specifically targeting Switzerland may have a commercial effect in Switzerland as well.

a) Can the use of another party’s trademark as a keyword in keyword search advertisement services​¹without the trademark owner’s permission infringe that trademark? Please answer YES or NO.

b) If YES, under which conditions is trademark infringement established?

The use of a confusingly similar sign in advertising or otherwise in the course of trade may constitute a trademark infringement (Art. 13(2)(e) TMA), unless the user has obtained permission from the trademark owner or is otherwise entitled to use the trademark (e.g. a reseller). A trademark infringement requires inter alia that the use in question constitutes use as a distinctive sign. With regard to use as a keyword, Swiss courts have denied this if the trademark in question does not appear in the advertisement itself and the advertisement is clearly separated from the search results. According to these decisions, the average user of a search engine is generally able to distinguish between the hits in the list of search results, on the one hand, and the advertisements, on the other hand. If the keyword does not appear in the advertisement and the advertisement is clearly marked as such, the user will recognize the purely contextual relationship between the keyword and the advertisement and will not assume that the advertisement originates from the trademark owner or an affiliated company (sic! 2012, 387; sic! 2015, 392).

In the Swiss Group’s view, offering internet referencing services allowing customers to store, as a keyword, another party’s trademark and displaying advertisements on the basis of that keyword as such does not constitute trademark infringement. However, if the concrete use of the keyword constitutes a trademark infringement, the search advertisement service provider may be liable for contributory infringement. Nonetheless, there seems to be no Swiss case law to that effect and the conditions under which an internet referencing service provider may be liable for such contributory infringement have yet to be clarified.

a) Do one or more online market platforms in the country or region of your Group​²provide services to stop trademark infringement on their platform? Please answer YES or NO.

b) If YES, what services are provided? Please tick the below boxes that apply (in the comment box you may specify if these differ for different platforms):