Switzerland: Nullity Of Defensive Trademarks: The GMAIL Case

According to the practice of the Swiss Federal Supreme Court, a trademark will not enjoy protection under the Swiss Trademark Act if its holder does not intend any serious use of the trademark, but rather registers it in order to prevent registration by third parties or to increase the range of protection of a similar trademark that is already in use. The purpose of such defensive trademarks is to impede competitors. Hence they stand in contradiction to the goal of trademark protection. They constitute an abuse of rights pursuant to Art. 2 of the Swiss Unfair Competition Law and as such, are null and void.

No Hiding Under The Period Of Grace

In the case at hand, the Swiss Federal Supreme Court had to deal with a trademark allegedly registered in order to extort financial benefits from a third party. Google Inc. had requested the nullity of the defendant's trademark "GMAIL" in Switzerland, claiming that his sole purpose was to sell it to Google for a high price, and that he had no serious intent to use it. However, the court of first instance had altogether refused to take into consideration the evidence produced by Google, stating that Art. 12 para. 1 of the Trademark Act gave the defendant a five-year period of grace during which he did not have to use his trademark in order to keep the registration.

The Supreme Court contradicted this point of view. In principle it is true that, in application of Art. 12 para. 1 of the Trademark Act, a trademark does not have to be used in the first five years, and up to five years of nonuse will not damage the registration. This, however, does not have the effect of altogether excluding the possibility of an abuse of rights. On the contrary, the abusive character of a trademark is a stand-alone reason for losing a registration. An abusive registration must be tested independently from the application of Art. 12 para. 1 of the Trademark Act.

Which Circumstances Point To The Existence Of A Defensive Trademark?

A notorious characteristic of defensive trademarks is the difficulty of proving their abusive nature. Following the doctrine in this question, the Supreme Court stated that all circumstances must be taken into account and weighed up in order to decide whether a registration is abusive or not, that is, to distinguish a serious intention to use a trademark from an intention to impede a third party.

The Supreme Court turned to the arguments brought before court by Google, which had been neglected in the first instance proceedings. The defendant first registered his trademark in Germany in April 2000, and there was a brief period of business activity under the trademark at this time, but there was then a period of several years without any activity at all. The defendant restarted using the trademark in August 2004, 4 months after the GMAIL trademark had been registered by Google in the EU. According to Google, the newly started business activities were kept at a very low level or even entirely simulated in order to make the defendant appear to be using the trademark. They took place only in Germany, not in Switzerland. Google also pointed out that the trademark registered by the defendant in Switzerland is exactly identical to the one registered by Google in the EU a few months before ("GMAIL"), but differs from the one he registered in Germany ("G-mail... und die Post geht richtig ab"). Finally, Google indicated that the defendant had disclosed his readiness to negotiate the sale of the trademark only a few months after he registered it in Switzerland.

The Supreme Court stated that all of these circumstances could constitute evidence for the existence of a defensive trademark. The lack of business activities can be a sign of the absence of a serious intention to use a trademark. The existence of negotiations between the parties can indicate that the purpose of the registration was to strengthen the defendant's position in these negotiations. In this regard, the Supreme Court stated that an evident disproportion between the objective value of the brand and the proposed sale price was not a condition for the existence of an abuse of rights.

The Supreme Court concluded that the court of first instance had failed to thoroughly clarify and consider the circumstances pointing to an abusive registration. The case was sent back to first instance for an exhaustive gathering of evidence.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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