Report of the Swiss Group​^*

Please answer the below questions with regard to your Group’s current law and practice.

Yes.

No.

N/A

If you have answered NO to Q1)a), please skip Q2)-Q6) and proceed to Q7); If you have answered YES to Q1)a), please proceed to Q2).

No. In a landmark dated decision dated 1991, the Swiss Federal Supreme Court recognized the descriptive use defense in the context of a word mark: the owner of the Swiss mark “Valser”, which means “from Vals” (a village located in the canton of Graubünden, in Switzerland) requested the cancellation of the subsequent marks “Optima Valsertal”, “Piz Ault Valsertal” and “Primus Valsertal” (“Valsertal” meaning “Vals Valley”), on the ground that they create a likelihood of confusion with its mark. All signs were registered in relation to non-alcoholic beverages, and in particular mineral water. The owner of the attacked smarks responded that it was entitled to indicate that its own products originated from the Vals Valley.

The Court held that geographical names such as “Valser” are descriptive and thus belong to the public domain unless they are used as a fanciful denomination or if they have acquired, through intensive use, a secondary meaning. The “fanciful denomination” doctrine was later elaborated to include, for instance, the use of a geographical place in a symbolic way (such as “Etna” [an Italian volcano] for bunsen burners) and “Alaska” for menthol cigarettes, or if it refers to a place which the covered goods evidently cannot originate from – such as “Mont-Blanc” for pens.

The Court then ruled that even if “Valser” had acquired a secondary meaning, its owner could not prevent competitors from indicating the geographical origin of their goods. However, such competitors have to make sure to sufficiently distinguish their marks from the prior trade mark. Like in cases of homonyms, it is necessary to balance the conflicting interests. As an obiter dictum, the Court mentioned that the interests of the local resident in the use of the name of a place would be given less weight than the right of the name holder to use his own name as a means of identification (BGE 117 II 321).

Descriptiveness of a trade mark can result from word elements as well as from device elements, or even a combination thereof. In general opinion, descriptive motifs are in public domain. E.g. an arrow pointing downwards in a female bust describes the digestive effects of the products in question; due to the differences in color and the graphical representation of the bust and the arrow, there is no relevant likelihood of confusion between the trade marks depicted below (BVGer No. B-5557/2011):

Accordingly, the descriptive use defense is not only available in respect of word trade marks but may be invoked in respect of figurative and combined marks also.

In principle, descriptive signs belong to the public domain and are to be kept free for trade. Therefore, there is basically no likelihood of confusion if the conflicting signs only share a descriptive element.

However, additional aspects might lead to a likelihood of confusion; according to the Swiss Federal Administrative Court, e.g. the combined trade mark “TheBodyShop” has been infringed by the combined trade mark “TheFaceShop” for identical goods (cosmetics), because the signs shared not only elements belonging to the public domain (“the”, “shop”) but also the structure comprising “the” at the beginning, “shop” at the end as well as an element of equal length referring to the body or a part of the body in the middle (BVGer No. B-2711/2016).

Likewise, the following trade marks, both covering goods of class 14, were found by the same Court to be too close:

The reasoning is that although the term “nice watch” belongs to the public domain, the similar graphical representation of the point of the letter “i”, the fonts and structure of the marks create a likelihood of confusion (BVGer No. B-1481/2015).

As indicated earlier, the Swiss Federal Supreme Court held that even if a name of a place has acquired distinctiveness, i.e. if it does no longer belong to the public domain, the owner of such a trade mark cannot prohibit more recent competitors from indicating the geographical origin of their goods – provided that adequate measures are taken to ensure a sufficient distinction (BGE 117 II 321).

Swiss trade mark law does not provide for such specific conditions; however, the duty of good faith and the prohibition of abuse of rights are cardinal principles of Swiss law and ensue from art. 2(1) and 2(2) of the Swiss civil code (“[E]ach person shall be required to exercise his rights and fulfill his duties in good faith. The manifest abuse of a right shall not be protected by law”) and 2 of the Swiss Act against unfair competition (“[A]ny behavior or business practice that is deceptive or that in any other way infringes the principle of good faith and which affects the relationship between competitors or between suppliers and customers shall be deemed unfair and unlawful”).

• ☒ the reputation of the invoked trade mark
• ☒ the use affects the value of the invoked trade mark by taking unfair advantage of its distinctive character or reputation
• ☒ the use gives the impression that there is a commercial connection with the trade mark owner
• ☐ the use discredits or denigrates the invoked trade mark
• ☒ the product is presented as an imitation or replica of the product bearing the invoked trade mark
• ☒ the way the sign is used, namely purely descriptive and in accordance with honest practices (which is notably not met if there are similarities in other aspects)
• ☐ the party invoking the defence was aware of the invoked trade mark
• ☐ other, namely …

In principle, any kind of evidence can be presented to support the defence. However, surveys aiming to prove e.g. the absence of likelihood of confusion between two marks, have in theory no relevance under Swiss law since assessing a likelihood of confusion is a question of law, not of fact (BGE 126 III 315, 318; BVGer No. B-4A_167/2019).

• ☒ court proceedings (civil)
• ☒ court proceedings (administrative)
• ☒ court proceedings (criminal)
• ☒ IP office
• ☐ other, namely N/A

No

No.

Please consult with relevant in-house / industry members of your Group in responding to Part III.

Yes. Harmonization is always welcome in trade mark law since disputes are increasingly international (cross-border).

If YES, please respond to the following questions without regard to your Group’s current law or practice.

Even if NO, please address the following questions to the extent your Group considers your Group’s current law or practice could be improved.

Yes.

No. The Swiss group sees no compelling reasons as to why the descriptive use defence should be limited to word marks.

The Swiss group is of the opinion that a descriptive use defense shall be available only if the use is purely descriptive and if there are no similarities in other aspects between the marks at stake.

Yes.

• ☒ the reputation of the invoked trade mark
• ☒ the use affects the value of the invoked trade mark by taking unfair advantage of its distinctive character or reputation
• ☒ the use gives the impression that there is a commercial connection with the trade mark owner
• ☐ the use discredits or denigrates the invoked trade mark
• ☒ the product is presented as an imitation or replica of the product bearing the invoked trade mark
• ☒ the way the sign is used, namely purely descriptive and in accordance with honest practices (which is notably not met if there are similarities in other aspects)
• ☒ the party invoking the defence was aware of the invoked trade mark
• ☐ other, namely …

The Swiss group opines that no harmonization is needed about the kind of evidence that can be filed, since there are profound differences between common-law and civil jurisdiction in this respect – and in particular the admissibility and relevancy of survey evidence aiming to assess actual or likely consumer confusion.

• ☒ court proceedings (civil)
• ☒ court proceedings (administrative)
• ☒ court proceedings (criminal)
• ☒ IP office
• ☐ other, namely …