From 1 January 2017, it will be possible to apply to the Federal Institute for Intellectual Property ("FIIP"), through a simplified procedure, for the cancellation of a trade mark that is not being used commercially and which, due to this fact, is not worth protecting. Until now, this cancellation had to be pronounced by law by a civil tribunal following a long and costly legal procedure. This alternative procedure, which is regulated in the Trade Mark Protection Ordinance, offers the possibility of settling manifest cases of non-use of a trade mark.
The background to this regulation is art. 12 of the Swiss Trademark Act (TmPA) which provides that trademark rights may no longer be asserted if the trademark has not been in use for an uninterrupted period of five years, unless there is good cause for that non-use. In accordance with applicable law, costly and complex court proceedings must be initiated, even in clear-cut cases, in order to have even a substantially perished trademark removed from the register. As per 1 January 2017, a simplified cancellation procedure will be instituted by the FIIP. Hence, any person may file a petition with the FIIP for deletion of a trademark that is vulnerable to cancellation against a modest fee.
On the part of the applicant, he or she must assert the non-use of the trademark and provide suitable evidence.
- The standard evidence is met with credible evidence, i.e. when the non-use of the trademark seems likely.
- In the event that the non-use of the trademark does seem likely based on an objective consideration of the filed evidence, the FIIP will approve the request and cancel the trademark from the register to the extent that the non-use has need credibly shown. In this respect, it is not necessary to file strict proof. Rather, the standard evidence is met with credible evidence, i.e. when the non-use of the trademark seems likely.
- In the event that the non-use of the trademark does seem likely based on an objective consideration of the filed evidence, the FIIP will approve the request and cancel the trademark from the register to the extent that the non-use has need credibly shown.
As regards the trademark owner, the legal position is different:
- On the part of the trademark owner, he or she must show that the trademark is genuinely in use in order for a sufficiently substantiated cancellation request to be rejected. For this purpose, the trademark owner can provide copies of invoices, advertisement documentation, etc. It is not sufficient for the trademark owner to merely object.
- There is, however, an additional defense argument according to which the trademark owner may claim good cause for non-use, i.e. any circumstances occurring independently from the trademark owner’s will and constituting an impediment to the use of the trademark. Nevertheless, this exemption clause is rather handled restrictively.
- As a result, it is advisable for trademark owners to regularly examine and optimise the use of their own trademark and to make any persons involved aware of the issue in order to safeguard the existence of one’s own trademark rights.