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Gucci fails with central attack in Switzerland

Gucci failed with a central attack on a "G" trade mark filed by the Cofra group (best known for its retail brand "C&A") in Switzerland.

In May 2006, Cofra filed the Swiss trade mark depicted on the right above and subsequently extended the protection through the Madrid system to other countries. Gucci opposed the Swiss registration; the opposition was denied by the IPO. Gucci then filed a civil action against Cofra before the Civil Court in Zug, and requested suspension of the appeal against the IPO's decision in the opposition proceeding.

Cofra counter-claimed for cancellation of Gucci's trade mark due to non-use in Switzerland, and Gucci failed to convince the court that its mark had been used in Switzerland. Gucci then argued that, even if the mark had not been used, it should be protected as a well-known mark in the sense of art. 6bis Paris Convention. The court agreed that a mark that had been cancelled due to non-use could nonetheless be protected as a well-known mark, if it was in fact well-known. However, Gucci had failed to show that the "G" mark was well known in Switzerland. Consequently, Gucci's complaint was dismissed. In an auxiliary argument, the court also denied a likelihood of confusion between the marks.

Gucci appealed to the Federal Supreme Court, but the appeal was denied. The Supreme Court held, inter alia, that the notoriety of a mark did not require use in Switzerland. It was in theory possible that a mark was well-known because of "spill-over advertising" from neighbouring countries. However, it was extremely unlikely that spill-over advertising would ever make a mark well-known. Since Gucci had not filed sufficient evidence to support an intitial claim to notoriety of its mark, the lower court could refuse to have a demoscopic survey carried out, although this is in general good evidence for the notoriety of a mark. The Supreme Court also supported the auxiliary argument that the two marks were not confusingly similar.

German summary of the decision of 29 October 2010  (the reasons only beame available recently).
Posted by: Mark Schweizer @ 11.52
Tags: switzerland, likelihood of confusion, central attack, non-use, well-known mark, paris convention,
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