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Germany cancels agreement with Switzerland on the use of trademarks

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Owners of German trademarks who rely on their use in Switzerland to protect their mark must change their strategy immediately, as Susanna Heurung of Maiwald explains

Owners of German trademarks who use their trademarks only in Switzerland should now be careful. As of May 31 2022, Germany has terminated an 1892 agreement with Switzerland, under which owners of German trademarks could rely on use in Switzerland to count as a genuine use of their marks.

In both Germany and Switzerland, a trademark must be used for five years after registration or expiration of the opposition period. If it is not possible to prove that the trademark has been used genuinely, in the event of a dispute, the trademark can be cancelled. In this case, proceedings based on this trademark can be lost due to lack of use, without the courts or a patent office even examining further questions such as the likelihood of confusion.

In principle, use must take place in the territory in which the trademark is protected, i.e. for German trademarks in Germany.

The German-Swiss Agreement of 1892 created an exception in favour of the trademark owner, according to which the use of a German trademark in Switzerland, or the use of a Swiss trademark in Germany, was recognised as genuine use. Thus, it was previously possible to rely on use in Switzerland to prove that a German trademark had been used in a way that preserved the rights of the owner, and vice versa.

Ruling from the European Court of Justice

The European Court of Justice (CJEU) has now put an end to this. As early as 2013, the CJEU ruled that the use of a trademark in Switzerland was not suitable for proving its genuine use in Germany (C-445/12 - Rivella International v OHIM). However, according to the case law of the German Federal Court of Justice, the agreement remained in force.

In another judgment from 2020, in which Ferrari relied on a right-preserving use in Switzerland for the German territory in accordance with the agreement, the CJEU ruled that the 1892 Agreement was incompatible with EU law (C-720/18, C-721/18 - Ferrari SpA/DU). Germany therefore had to amend this situation, and has now complied with this obligation by terminating the agreement.

Owners of German trademarks that are only used in Switzerland must therefore immediately adapt to the changed situation. According to general opinion, the termination of the agreement does not apply retroactively. Acts of use in the other contracting country up to the date of termination of the agreement are therefore still considered to constitute genuine use.

However, the use of a German trademark in Switzerland after May 31 2022, can no longer be used to prove use of the trademark in Germany. Owners of German trademarks who have previously only used the trademark in Switzerland should therefore ensure from now on that they can also prove the use of their trademarks in Germany. If they fail to do so, proceedings based on these trademarks will be lost on the grounds of lack of use alone. Worse still, the trademarks concerned may even be cancelled.

The proof of use must allow determinations to be made as to the place, time, extent, and nature of the use of the trademark for the goods and services covered by it. It is advisable to provide precise documentation of the trademark use, showing the number of units sold, the turnover achieved, the advertising expenses incurred, and so on. This must be supported by appropriate documentation such as exemplary invoices, photographs of the products concerned and marked with the trademark, and advertising materials.

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