MONDAY, 29 AUGUST 2011
Switzerland: (lack of) protection of famous marks in opposition proceedings
You-know-who opposed the registration of the above depicted trade mark for tea and coffee and machines for the preparation of beverages. Both the Swiss IPO as well as the Federal Administrative Court rejected the opposition.
The Administrative Court argued that the similarities between the marks (see the basis for opposition below) were insufficient to create a likelihood of confusion (they do not really address the similarity of goods, which in my opinion would have justified some explanation, but given the outcome, it doesn't matter). Not every association creates a likelihood of confusion.
The important part of the decision comes next. Coca Cola argued that because COCA COLA was a famous mark ("mark with a reputation" under EU law), it should enjoy added protection. The Court granted that COCA COLA was a mark with a reputation. However, famous marks did not enjoy special protection in opposition proceedings. Namely an (inferred) intent of the proprietor of the younger sign to free ride on the good will of the older mark could not be taken into account in opposition proceedings, which were designed to be relatively simple, quick proceedings. Issues of intent could only be addressed in ordinary civil proceedings before civil courts.
I guess the lesson for owners of marks with a reputation is not to rely on opposition proceedings when the similarities between the marks are not so great. The problem in many cases may be that, if the younger mark is not yet being used, it is questionable whether there is sufficient interest to bring a civil suit (mere registration of a similar mark does not necessarily create such an interest; the question is controversial in Switzerland and has not been finally settled).
Link to German summary of decision of 16 August 2011 (with further link to full text).
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