Termination of 1892 Convention in steps
The Convention between Switzerland and Germany concerning mutual patent, design and trademark protection of 13 April 1892 was one of the oldest international bilateral conventions that still played a role in the practice of the two contracting states and was repeatedly referred to in case law and legal writing.
According to well-established rules in Switzerland and in Germany:
- trademark rights can no longer be asserted if a trademark has not been used for five consecutive years before the assertion, unless five years have not yet passed since the expiry of the deadline for opposition or completion of an opposition procedure;(1) and
- anyone may file a request with the trademark office of Switzerland or Germany, respectively, for cancellation of the trademark on the grounds of non-use after five years from the unused expiry of the opposition period or the conclusion of opposition proceedings(2) or seek a similar recourse from the courts.(3)
The 1892 Convention had the effect that this consequence of non-use of a trademark in its country of registration did not apply if that trademark had been used in the other of the two countries.(4) Therefore, the use of a trademark in one country preserved the rights of the trademark in the other country.
While the 1892 Convention applied in both countries, it attracted more attention in Switzerland because of the relative size of the markets, which meant that a use in Germany was more likely to preserve a Swiss trademark than the other way round.
Termination of 1892 Convention in steps
The Convention first took a hit with the European Court of Justice (ECJ) decision of 12 December 2013,(5) in which the Swiss producer of the drink Passaia wanted to preserve its trademark rights in Germany by stating that it had been used in Switzerland, relying on the 1892 Convention. The ECJ held that when dealing with EU trademarks, only EU law is applicable, and that there is no room for international conventions binding only one EU member state. Therefore, the use of the PASSAIA trademark in Switzerland was not sufficient to preserve trademark rights in Germany. Notwithstanding that ECJ decision, the Swiss courts continued to consider the use of a trademark in Germany as sufficient to preserve trademark rights in Switzerland.
Subsequently, the ECJ in its decision of 22 October 2020(6) held that the 1892 Convention is also incompatible with EU law when dealing with national trademarks.(7) Nonetheless, it is still binding on Germany and applicable until its incompatibility with EU law is resolved. According to article 351(2) of the Treaty on the Functioning of the European Union, the state party to any agreement which is not compatible with EU treaties must eliminate the incompatibilities. In this case, this meant that Germany was obliged to terminate the 1892 Convention in order to resolve the incompatibly.
Consequently, Germany terminated the 1892 Convention with a note dated 20 April 2021, which Switzerland accepted without much ado. The termination became legally effective as of 31 May 2022 and the Convention expired on that date. According to the Swiss Federal Institute of Intellectual Property, the Convention remains applicable to objection and cancellation procedures regarding non-use, provided that the period for the relevant use, or rather non-use, ended prior to 31 May 2022.
The termination of the 1892 Convention means that the use of a trademark in Germany no longer has any effect on trademark rights in Switzerland and vice versa. This means that for a trademark to be protected in Switzerland, it also has to be used in Switzerland and such domestic use must be proven. The same applies with regard to use in Germany for a German trademark. Therefore, securing and preserving evidence of genuine use of a trademark in the country where it is registered has become even more relevant and important.
For further information on this topic please contact Reinhard Oertli at MLL Meyerlustenberger Lachenal Froriep Ltdby telephone (+41 58 552 03 40) or email ([email protected]). The MLL website can be accessed at www.mll-legal.com.
(1) Article 12(1) of the Swiss Trademark Act; article 25 of the German Trademark Act.
(2) Article 35a of the Swiss Trademark Act; article 49 of the German Trademark Act.
(3) Namely, a confirmatory action in Switzerland or a nullity claim in Germany.
(4) See Swiss Federal Court decision 124 III 277, 101 II 293 and German Federal Court of Justice, decision of 15 December 1999 - I ZR 114/97.
(5) Baskaya/Passaia, C‑445/12 P.
(6) Ferrari/Testarossa, C-720/18 and C-721/18.