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TUESDAY, 25 JANUARY 2011
Superman crashes in Switzerland
 Does
the image on the right look familiar? Well, that's what DC Comics,
proprietor of the "Superman" trade marks, thought, too. The mark on the right was filed by the Swiss company FAF AG for a plethora of goods in
classes 3, 9, 14, 16, 18, 24, 25, 28 and 41.
DC Comics opposed, but it had a
problem: it had not filed a trade mark for the Superman "S" (below) in
Switzerland. Therefore, it tried to rely on the well known mark "S",
using the provision of art. 6bis(1) Paris Convention (adopted into national Swiss law by art. 3(2)(b) Trade Mark Act).
In
line with standard case law, the Swiss IPO held that to establish that a
mark was well known in Switzerland, it was not sufficient that the
relevant public had a vage recollection of the mark. Absent consumer
surveys, it needed to be shown that the mark was intensely used in
Switzerland, or at least heavily advertised. DC Comics filed evidence
for foreign registrations of the "S", press clippings concerning the
"Superman" brand in Switzerland, and some revenue figures. However, this
was insufficient to establish that the "S" mark was well known.
The
lesson for brand owners is that it is very difficult, at least in
Switzerland, to establish that your mark is well-known in the sense of
art. 6bis(1) Paris Convention, even in a case like this one, where one
would think that DC Comics had a good shot, given the fame of the
Superman brand. Do not rely on art. 6bis Paris Convention. And, dear
Americans, do not forget that Switzerland is not part of the EU. It is
not covered by your Community Trade Mark.
Link to decision of 30 December 2010 (not final).
Posted by: Mark Schweizer @ 10.12
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