The Judge Punishes Those Who Come Too Late: Lack Of Trademark Protection Has Dramatic Consequences In The Künzli Case

Author:Ms Barbara Müller
Profession:meyerlustenberger | lachenal

In the past few years, Künzli SwissSchuh AG was embroiled in several trademark disputes with the US shoe manufacturer K-Swiss. K-Swiss was established in the 1960s by two Swiss who emigrated to Los Angeles (the original founders are no longer involved in the company). K-Swiss initially imported Künzli shoes to the US (while Künzli imported American sneakers to Switzerland), then started producing its own shoes and eventually became one of the leaders in the casual shoe sector.

Künzli shoes featured special shoe laces and five decorative stripes (Künzli sold the US patent for the shoe laces to K-Swiss in the 1970s). K-Swiss registered the five stripes in the US in 1974 and in Germany in 1990 as a shoe trademark, while Künzli itself neglected to register the five stripes as a trademark until 2011.

In 2012, the Düsseldorf appellate court confirmed K-Swiss's right to use the five stripes for shoes in Germany. This judgement forced Künzli to remove the five stripes from its shoes and led to its decision to use five squares in a row in future.

In Germany, a trademark owner can prohibit a previous user of an unregistered mark from continuing to use this mark as soon as it has registered the mark. In Switzerland, this principle of first registration is weakened by the right of continued use under Art. 14 of the Trademark Protection Act. This right of continued use gives the previous user the right to continue to use a mark that was in use before the registration to the same extent as before (i.e. product diversification is excluded), even if the mark in question has since been registered as a trademark by someone else. This granting of legal privileges to the first user rather than the first applicant is unique to Switzerland and is not applied by other countries.

If there is no right of continued use, things can...

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