Pierre Fabre, proprietor of the Swiss trade mark ELUAGE, registered for skin care products, lodged an opposition against the trade mark YALUAGE by Sofar Swiss AG, claiming protection for similar goods. Sofar raised the objection of non-use of the older mark, and in a first decision, the IPO sided with Sofar and rejected the opposition. After Pierre Fabre had filed additional evidence, the IPO allowed the opposition partially (for certain goods), only for the Federal Administrative Court to overturn the decision on appeal.

What happened? Pierre Fabre had shown deliveries of products bearing the mark in question in the relevant period to its Swiss subsidiary, but no sales to retailers or end customers. The Administrative Court reminded everybody that within-group sales were not use in commerce, as the mark was not used to indicate the source of the goods in this context. Since Pierre Fabre had failed to demonstrate sales to unaffiliated parties, it had failed to show use in commerce, and the mark was unenforceable. Opposition dismissed.

The decision shows once again that proving genuine use in commerce is not an easy undertaking. It also seems overly formalistic. What's the point of the deliveries to the Swiss subsidiary, if not to put the goods on the Swiss market? In administrative proceedings, the court theoretically has to gather the evidence by itself (it does not do so in opposition proceedings). ELUAGE is clearly in use in commerce in Switzerland, as even a quick search on the internet confirms. In the March 2012 issue of the consumer magazine SALDO (in the relevant time period), the ELUAGE eye cream was tested. How would SALDO have acquired the cream, if not from a Swiss re-seller? Together with the sales to the Swiss subsidiary, this makes it more than likely that the mark was genuinely used in commerce in Switzerland. The result of the overly strict practice is that Swiss consumers will be faced with the marks ELUAGE and YALUAGE used for similar goods, which I do believe causes confusion.

B-6986/2014 of 2 June 2016 (PDF)