Sanofi Pasteur opposed the Targin (fig.) mark on the right based on its older "wave" trademark, depicted on the left.


The Swiss IPO found a likelihood of confusion and allowed the opposition. The Federal Administrative Court reversed. So far, so unremarkable - whether the two trademarks lead to a risk of confusion is a question I do not feel very strongly about.

However, the Federal Adminstrative Court reached its result by denying the older mark any protection because it had not been used properly: Sanofi Pasteur had used its "wave" mark in blue and turquoise, together with "Sanofi Pasteur MSD" (see above). The Administrative Court held that this use was insufficient to avoid abandonment of the mark: the use in colour would change the overall impression of the registered mark. While the (black and white) registered mark was a "trivial" form, the logo in colour was a dynamic sign alluding to the helix of the DNA. The addition of the strong word elements "sanofi pasteur MSD" also added to the overall different impression of the mark as used. The mark was therefore not used as registered and became unenforceable.

This conclusion is very troublesome for trademark owners: so far, practitioners had assumed that a registration in black and white could be used in any colour. If this new practice stands, that is not true anymore. You will need to register your mark in the colours you actually use it in. And also in combination with any (non descriptive) word elements you use the figurative element together with. Otherwise, you risk that your mark will be deemed unenforceable due to lack of proper use. Trademark owners better check their Swiss portfolio and make sure their registrations match their actual use of the mark.