Germany terminates agreement with Switzerland on mutual recognition of the use of trademarks

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The “Convention between Switzerland and Germany concerning the reciprocal protection of patents, designs and models and trademarks, concluded on April 13, 1892” (the Convention) provides that a trademark registered in Germany may also be used on Swiss territory for preserve their rights and vice versa. This agreement was terminated by Germany on May 31, 2022. The termination may have a major impact on a number of marks registered in Germany or Switzerland but which have only been used in the other country.

Significance of the Convention

In accordance with art. 12 of the Swiss Trademark Protection Act as well as Art. 25 of the German Trademark Law, after the expiry of a grace period of five years, rights can only be asserted if the mark has been used for the goods and services for which it is registered. Non-use may lead to the cancellation of the trademark registration. In principle, only domestic use in the country for which the mark is registered is considered to be a right-preserving use. The Convention has, however, sought to facilitate this obligation by considering the use of a mark in one territory also as use in the other. Although not apparent from the wording of the convention, it is recognized that reciprocal recognition of use is only given if the mark is registered in both Switzerland and Germany.

In Swiss practice, a broad reading of the Convention prevails. In a recent decision (B-6253/2016, July 2021, Prosegur), the Swiss Federal Administrative Court ruled that, within the scope of the Convention, even the use of a European Union trade mark in Germany is admissible to prove the right – the preservation of the use of a Swiss mark.

Conversely, use of a Swiss trademark does not constitute use of a European Union trademark. In opposition proceedings against a European Union trademark, the Court of Justice of the European Union (the ECJ) rejected a use preserving the right of an international registration with a German designation, although that the mark has been used in Switzerland (C-445/12 P of December 12, 2013, BASKAYA). According to the ECJ, the old art. Article 42(3) of the CTM Regulation requires use “in the Member State”, which must be interpreted autonomously and independently of national laws, including agreements concluded by Member States. A fortiori, use of a Swiss trademark would not be considered as use of an EU trademark “in the Union” within the meaning of Art. 47(2) of the EU Trade Mark Regulation.

The Testarossa decision

The termination of the Convention was triggered by a judgment of the CJEU (C-720/18 and C-721/18 of October 22, 2020, Testarossa) in which it declared the Convention incompatible with EU law. The Higher Regional Court of Düsseldorf referred to the CJEU the question whether, when examining the preservative use of a mark in Germany, the use of the mark in Switzerland must be taken into account in accordance with the Convention. The question arose in the context of two disputes concerning the cancellation of two trademarks held by Ferrari SpA for lack of genuine use.

The CJEU has established that with regard to Art. 12(1) of the former Trade Mark Directive 2008/95/EC refers to genuine use of a mark “in the Member State concerned”, it excludes consideration of use in a Member State third parties, such as Switzerland.

Although the CJEU saw no possibility of interpreting the Convention in accordance with EU law, it allowed the referring court to apply the Convention as long as the lifting of the incompatibility was not eliminated. The CJEU then pointed out that Germany was obliged, under Art. 351 of the Treaty on the Functioning of the European Union to terminate the agreement, if it cannot eliminate the incompatibility of the agreement with EU law by other means.

Notice of Termination

Following this judgment of the CJEU and by notification of April 30, 2021, Germany finally denounced the Convention with effect from May 31, 2022 (published in RO 2022, 156 for Switzerland and BGBl II 2022, 127 for Germany) .

Outlook

From June 1, 2022, trademark owners in Switzerland and Germany will no longer be able to rely on the mutual recognition of use previously provided for by the Convention.

The Swiss Intellectual Property Institute has announced that it will continue to accept proof of use of German marks in opposition and cancellation proceedings provided that the relevant period of use is before the date expiry of the Agreement. Evidence relating to use occurring in Germany after May 31, 2022 will no longer be considered.

The German Patent and Trademark Office has not yet issued a statement regarding the termination of the Convention. It therefore remains to be seen whether it will continue to apply the Convention to the use of Swiss trademarks before May 31, 2022.

After the expiration of the Convention, trademark holders covering Switzerland or Germany are strongly advised to examine whether they are using the trademark registered in the country concerned and, if necessary, to prepare the necessary measures to do so. resume use in good time. Otherwise, they may be prevented from enforcing their marks or even face cancellation.

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