In a recent decision, the Federal Supreme Court has confirmed some important principles that are relevant for both plaintiffs and defendants in trade mark non-use cancellation actions.
The case brought before the Court related to a cancellation action based inter alia on non-use directed against trade mark registrations featuring the word Yello. The plaintiff was the owner of trade mark registrations featuring the word Yallo. The commercial court of the canton of Zürich in part did not admit the action on grounds of absence of legal interest of the plaintiff, namely to the extent that the contested Yello trade mark registrations extended to classes not covered by the plaintiff's own Yallo trade mark registrations. The plaintiff appealed to the Federal Supreme Court.
The Supreme Court held that in principle, any person may file a trade mark cancellation action based on non-use and that no special legal interest is required to establish legal standing to bring the action: the generally given interest of any party in the free creation of marks is, in itself, sufficient to establish legal standing.
As an exception to this rule, the court stated that where the plaintiff, on grounds other than the rights based on the contested trade mark, is not in a position to use, or is prohibited from using, the contested mark or a mark similar thereto, no sufficient interest to bring a cancellation action will be given. In such cases, only special circumstances can establish sufficient legal interest of the plaintiff to contest the validity of the subject trade mark registration.
Applying these principles to the case at hand, the court held that no facts suitable to establish the – exceptional – absence of a legal interest of the plaintiff had been asserted or proved in the proceedings and that the plaintiff's legal interest to bring the action accordingly could not be limited to seeking cancellation of the defendant's marks only to the extent that these covered the same classes as the plaintiff's marks.
In summary, while non-use cancellation action plaintiffs will generally not need to show a legal interest to bring the action, if the defendant can show that the plaintiff is prohibited from using the contested mark or a mark similar thereto on other grounds (such as other, valid trade mark registrations of the defendant), the defendant may on these grounds successfully defend its registration, even in the absence of validating use.
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| Brendan B Bolli |
Rainer U Schalch |
E Blum & Co AG
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