In a recent decision, the Federal Supreme Court decided a case opposing Arthursgroup SA ("Arthur I") on the one hand and Swiss Arthur Prod SA ("Arthur II") on the other hand.
Arthur I - once operating a night club, now a restaurant/ bar/lounge - is the owner of the "ARTHUR'S" trademark, which has been registered since 1996 in classes 25, 35, 38, 41 and 42 (now 43). Arthur II - an entertainment company organizing and producing events and shows - registered the "Les Théâtrales de Swiss Arthur Prod" trademark in 2008 in class 41.
After battling over the course of a couple of years (sending cease and desist letters) without any results, Arthur I decided to bring the fight over the Arthur's name to the Swiss courts. Claiming to be the rightful owner of the Arthur's name, Arthur I requested the court inter alia to cancel Arthur II's trademark and to order Arthur II to change its trade name (by removing the word "ARTHUR"). On the grounds of article 951 para. 2 of the Swiss Code of Obligations, which requires a registered trade name in the Commercial Register to have sufficient distinctiveness from an earlier registered trade name, Arthur I won a "small" battle: Arthur II was requested to modify its trade name but left free to decide on the appropriate changes to adopt. A trademark violation was however denied. This case is interesting in particular as regards (i) the genuine use of a trademark requirement, (ii) the similarity between services of classes 41 and 43, and (iii) the lapsing issue relative to the protection of trade names.
(i) Since both trademarks are registered in class 41 for similar services (organization of events), the Court first analyzed whether Arthur I's use of its trademark in relation to these services was genuine.
According to articles 11 and 12 of the Swiss Trademark Act, a trademark shall be used in relation to the goods or services for which it was registered in the five years following registration, failing which the trademark rights are lost for such non used goods or services. The Court recalled that a genuine use must be serious in relation to each of the products or services for which the trademark has been registered, and in a way that the targeted audience recognizes such use of a trademark as a distinctive sign.
In this case, Arthur I had not genuinely used the trademark. On the one hand, hosting sporadic events organized by third parties (in a restaurant/bar/lounge) within the Arthur I premises was not...