Under Swiss trademark law, after a five-year grace period a trademark enjoys protection only to the extent that it is used in connection with the goods and services for which it is claimed. On March 4 2013 the Federal Administrative Court (B-5871/2011) ruled on the following question: if a trademark is registered for a heading in a specific class, is use of the trademark only for certain goods or services within that heading sufficient to preserve protection for all goods or services within that heading?
Bayer Pharma Aktiengesellschaft is the owner of the international trademark GADOVIST. Based on this trademark, Bayer filed an opposition to an international trademark application for GADOGITA, filed by Agfa Health Care Imaging Agents GmbH. Bayer had registered its trademark in, among other classes, Class 5 for pharmaceutical products. Bayer partially opposed Agfa's trademark application for goods and services registered in Classes 5 and 43, based on the grounds of likelihood of confusion.
Agfa claimed that:
- the opposing trademark had been used only for diagnostic purposes (ie, for contrast agents); and
- that the term 'gado' was descriptive for the goods concerned.
Bayer submitted proof of use of its trademark for contrast agents and argued that this established use of the trademark for all products falling under the class heading 'pharmaceutical products'. The Federal Institute of Intellectual Property rejected Bayer's opposition and held that the recognised use of the opposing trademark was limited to contrast agents and that the use of a trademark for certain goods will not generally establish its use for all goods within a heading or general term. Bayer filed an appeal against this decision with the Federal Administrative Court.
The court held that there is a tendency for new trademark applications to contain a broad list of goods and services, and that this approach should not be rewarded with a broad scope of protection by means of a fictive extension of the use of the trademark. On the other hand, the court found that it is not the purpose of the obligation to use a trademark to prevent the modernisation, further development or other changes or amendments to the protected goods and services. The use of the trademark during the grace period must preserve the owner's trademark rights within an adequate scope (ie, beyond similar goods and services for which the trademark has actually been used to cover obvious future uses as well).
Hence, to define the basis of its scope of protection, the actual use of a trademark must be extended abstractly, based on the perspective of the relevant public and their expectations with regard to the future use of the trademark. For example, the use of a trademark for cheese must be deemed as sufficient use for the heading 'dairy products', as one can expect that if a trademark is used for cheese, it might also be used in the future for other dairy products. On the other hand, the use of a trademark for baby buggies would not qualify as a sufficient use for all goods under the class heading 'vehicles'. The court found that the use of a trademark for certain goods or services must be considered sufficient use for an entire heading, to the extent the particular goods or services fit into the common product range of a typical representative of the respective industry. Hence, the more typical a certain use is for a heading or general term, the more such use should be considered sufficient to maintain protection for all goods under the heading.
Based on these principles, the court found that the use of the trademark for contrast agents was not adequate to cover the rather broad class heading 'pharmaceutical products', as contrast agents cannot be deemed to be a typical product for this heading.
The court's decision has given welcome guidance and substantiation to its case law (following its January 3 2012 decision ebm, fig v EBM Ecotec B-2227/2011), with respect to the conditions under which use of a trademark for certain goods and services can be deemed as an adequate use for a class heading. The approach of considering the perspective of the relevant public to an anticipated use of the trademark and the expected development of the market concerned has been affirmed subsequently in Camille Bloch Mon Chocolat Suisse v my swiss chocolate.ch (B-1686/2012).
For further information on this topic please contact Beat Wicki or Roger Staub at Froriep Renggli by telephone (+41 44 386 6000), fax (+41 44 383 6050) or email (email@example.com or firstname.lastname@example.org).
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