Evidence of trademark use: The Swiss perspective

We have written previously of the importance of providing evidence of trademark use from both a general and EU point of view; here, Chantal Koller provides the Swiss perspective.

As in other jurisdictions, the need to prove trademark use becomes relevant in Switzerland after a period of five years following registration. Once this five-year ‘grace period’ has expired, a trademark owner may need to demonstrate valid use of the mark if they are called on to do so; eg as a result of an opposition or administrative cancellation request.

Where that is the case, the Swiss IP Institute (IPI) applies specific criteria as set out below. Our experience is that the outcome of the IPI’s analysis will mostly depend on the quality of evidence provided, rather than obvious use, even for well-known marks. Companies need to provide tangible and objective evidence in line with these criteria, therefore, if they are to have the best chance of success proving the validity of their registered marks.

The Swiss criteria: Six steps to success

When seeking to provide evidence of use in Switzerland, brand owners need to respond cumulatively to the IPI’s six criteria, which we have set out below with additional guidance:

• The mark must be used as a trademark
  In order to be relevant and usable, each piece of evidence submitted should display the trademark as it has been registered. Recent Swiss case law in this respect shows that the main distinctive portion of the mark should at least be reproduced on each piece of evidence. For service marks in particular, this criteria can become tricky as the local practice considers that issuing invoices under the company name, bearing the same name as the registered mark, would not be considered as valid trademark use, but rather use as a company name.
   
• The mark must have been in use in Switzerland, and in the entire territory
  The evidence provided to the IPI needs to demonstrate use in the entire territory. Recent case law interprets this to mean that all three linguistic regions (Swiss-German, Swiss-French and Swiss-Italian) need to be covered. Hence, the evidence provided, to be relevant, must show that there are clients in contact with the mark in all three regions. Evidence relating to other countries, even surrounding countries, will not be considered as being relevant to a Swiss case, even for well-known/famous marks. On the same note, pan-European evidence, where Europe is treated as one region (EMEA for example) will not be sufficient to demonstrate use of the mark in Switzerland. One exception exists: Switzerland and Germany concluded an agreement whereby companies domiciled in one country and registering their mark in both countries could validate their registration in the country where they are not residents by submitting use evidence pertaining only to their country of residence. This applies however only to eligible Swiss and German residents.
   
• The mark must have been in use during the last applicable five-year period...
  As in most jurisdictions, the evidence submitted must cover the entire five-year period, calculated retroactively from the date where a first contact is established with the other party (cease-and-desist letter, opposition date, cancellation action date of submission). In order to be relevant, the evidence should be fragmented over each of the five years. A perfect example would be one invoice per month/quarter for each of the five x 12 months.
   
• ...and for substantial volumes
  As in most jurisdictions, volumes should be adequate in line with the type of goods/services and the nature of the business activity. The main criteria, according to recent case law, is to be able to “respond to a certain consumer demand” in the specific market area and of course to demonstrate that.
   
• The mark should be in direct connection with the goods/services protected in the registration
  Each category of goods and services being challenged by a non-use claim have to be found in the evidence produced. By 'category', the Swiss practice does not only mean the classes of the Nice Agreement but, within each class, the 'family' of goods that are falling under the same 'Oberbegriff' (ie generic term). When use is only partial, the validity of the mark will not extend to the goods/services not featured in the evidence of use. There is therefore no automatic/ex officio extension to the other categories/classes of goods.
   
• The mark must have been used by the trademark owner or authorised third party
  The evidence submitted should also demonstrate a clear link between the registered mark and the registered owner. In other words, on each evidence document, the name of the owner should be objectively visible and recognisable as the trademark registration owner. Should licences have been concluded or should the mark be used by other authorised users, the chain of delegation of such use should be shown in additional evidence, such as a licence agreement. For companies of the same group/family, an extract from the company website showing the group structure or from company registers evidencing how the companies are linked to each other, are valid documents. According to recent case law, use by an authorised third party also needs to be supported by evidence, and cannot simply be claimed in arguments.

Acceptable forms of evidence

There is no limitation as to the type of evidence that can be submitted in Switzerland to prove use (in line with the six criteria set out above). This can include for example:

• Copies of invoices;
• Catalogues, brochures, price lists;
• Advertisements;
• Client listings;
• Copies of websites;
• Product photographs;
• Third-party testimonies/affidavits;
• Annual reports, etc.

However, the evidence submitted should be objective and cannot only be issued from the owner’s statements or databases. In this respect, sales figures, promotional investment figures, client listings and any other such subjective evidence may be questioned if it is not backed up by additional, objective elements. Acceptable objective evidence includes documents that are accessible to consumers, such as invoices, catalogues/brochures/price lists, advertisements, websites, and so on. Third-party affidavits from professional associations or customers are also acceptable. We routinely draft these on behalf of clients before submission to the signatory.

What about confidentiality?

Where required, it is possible to maintain confidentiality when submitting documents as evidence, either by redacting (covering/blanking out) sensitive information or by marking the entire document as confidential (in which case, it will not be accessible to the other party or the public as a whole). A balance must be struck, however, in the interests of fair process.

If you have any questions about collating or submitting evidence to prove trademark use, please speak to your trademark attorney or contact us below.

Chantal Koller is Managing Director, Trademarks at Novagraaf in Switzerland.