Nullity Of Defensive Trademarks: The GMAIL Case

Author:Mr Laurent von Niederhäusern
Profession:Froriep Renggli
 
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According to the practice of the Swiss Federal Supreme Court, a

trademark will not enjoy protection under the Swiss Trademark Act

if its holder does not intend any serious use of the trademark, but

rather registers it in order to prevent registration by third

parties or to increase the range of protection of a similar

trademark that is already in use. The purpose of such defensive

trademarks is to impede competitors. Hence they stand in

contradiction to the goal of trademark protection. They constitute

an abuse of rights pursuant to Art. 2 of the Swiss Unfair

Competition Law and as such, are null and void.

No Hiding Under The Period Of Grace

In the case at hand, the Swiss Federal Supreme Court had to deal

with a trademark allegedly registered in order to extort financial

benefits from a third party. Google Inc. had requested the nullity

of the defendant's trademark "GMAIL" in Switzerland,

claiming that his sole purpose was to sell it to Google for a high

price, and that he had no serious intent to use it. However, the

court of first instance had altogether refused to take into

consideration the evidence produced by Google, stating that Art. 12

para. 1 of the Trademark Act gave the defendant a five-year period

of grace during which he did not have to use his trademark in order

to keep the registration.

The Supreme Court contradicted this point of view. In principle

it is true that, in application of Art. 12 para. 1 of the Trademark

Act, a trademark does not have to be used in the first five years,

and up to five years of nonuse will not damage the registration.

This, however, does not have the effect of altogether excluding the

possibility of an abuse of rights. On the contrary, the abusive

character of a trademark is a stand-alone reason for losing a

registration. An abusive registration must be tested independently

from the application of Art. 12 para. 1 of the Trademark Act.

Which Circumstances Point To The Existence Of A Defensive

Trademark?

A notorious characteristic of defensive trademarks is the

difficulty of proving their abusive nature. Following the doctrine

in this question, the Supreme Court stated that all circumstances

must be taken into account and weighed up in order to decide

whether a registration is abusive or not, that is, to distinguish a

serious intention to use a trademark from an intention to impede a

third party.

The Supreme Court turned to the arguments brought before court

by Google, which had been neglected in the...

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