By notices dated April 30 and December 29, 2021, Germany terminated the "Convention of April 13, 1892 between Switzerland and Germany Concerning the Reciprocal Protection of Patents, Designs and Trademarks" (SR 0.232.149.136) - one of the oldest bilateral treaties entered into by these two countries which was still in place. This decision was taken following a judgment of the European Court of Justice of 22 October 2020 (Joined Cases C-720/18 and C-721/18), in which the Court held that the Convention was not compatible with European law.
According to the Convention, genuine trademark use in Germany can be considered as genuine trademark use in Switzerland, provided the same mark is protected in both countries and the holder has his domicile or a real and effective establishment either in Switzerland or in Germany. Many businesses relied on this provision to maintain trademark protection in Switzerland in the past - but this era is now coming to an end.
The notice will enter into force shortly on May 31, 2022. The Swiss Federal Institute for Intellectual Property (FIIP) announced today that they will continue to apply the provisions of the Convention (i) in opposition proceedings in which non-use is alleged, and (ii) in all cancellation proceedings due to non-use, provided that the relevant use period is prior to the termination of the Agreement. In other words, evidence showing use in Germany after 31 May 2022 will no longer be considered by the FIIP. Those Swiss (or German) companies that have are not yet started using their trademarks in the respective other country should reconsider their strategy - or they will now risk losing trademark protection!
Übereinkommen zwischen der Schweiz und Deutschland betreffend den gegenseitigen Patent-, Muster- und Markenschutz