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
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
The Supreme Court turned to the arguments brought before court
by Google, which had been neglected in the...