Easy Cancellation Procedure for non-use of Trademarks
On 1st Januar 2017, in addition to the new "Swissness" legislation, a number of other trademark related revisions came into force. Besides other changes, the Swiss Federal Trade Mark Protection Act (TmPA) introduces a new administrative cancellation procedure, whereby anyone can request the cancellation of a trademark at the Swiss Federal Institute of Intellectual Property (IPI) on the grounds of non-use of said trademark (art. 35a-35c TmPA). No specific interest in cancelling the trademark needs to be demonstrated. Instead of long and costly proceedings before a court, this cancellation procedure offers a quick road to attack existing trademark registrations.
At the earliest after a period of five years following the expiry of the period to file for opposition or the conclusion of opposition proceedings, a cancellation request for a trademark can be submitted to the IPI. The only requirement is that the applicant can establish facts based on which the non-use of the affected trademark appears credible. The grace period of five years takes into account that increasingly more time is needed from the filing of a trademark application until such trademark's introduction in the market.
One of the objectives of this administrative cancellation procedure which is available to anyone is to remove unused registered trademarks from the register so that they are again available for third parties.
The applicant needs to furnish prima facie evidence of the non-use. If the trademark owner is a legal entity, its deletion from the commercial register can be an indication for the non-use of its trademark. The IPI grants the trademark owner the opportunity to take a stand and object to the cancellation request. Possibly, the owner can put forward important reasons for the non-use or establish that the trademark has in fact been used in the sense of the TmPA. Catalogues, packaging or bills with the trademark or showing clearly that products and services have been sold under the trademark concerned can be filed to establish proof of use. Whilst the mere in-house or intragroup use is not sufficient to establish trademark use in the sense of the TmPA, a use by third parties such as a subsidiary or a licensee can be considered as use by the trademark owner.
Whether an actual trademark use is given depends on various factors: For mass-produced items a more extensive use is required than for luxury brands or trademarks for industrial products. Furthermore it is essential that the use of Swiss trademark registrations has taken place within Switzerland. The only exception constitutes a use of the trademark in Germany: Based on the Agreement between Switzerland and Germany on Reciprocal Patent, Design and Trademark Protection of 13th April 1892, the use of a trademark in Germany is at the same time considered to be a use in Switzerland. The trademark owner can also repel the cancellation request if important reasons for the non-use of the trademark can be shown. Such important reason must have occurred independent from the trademark owner's will, such as import restriction orders or other government regulations, which have prevented the trademark owner from using the challenged trademark.
If the applicant cannot furnish sufficient prima facie evidence for the non-use of the trademark, the IPI declines the cancellation request and the trademark registration remains valid. However, even if the IPI has rejected the cancellation request, the applicant may institute judicial cancellation proceedings. These proceedings remain unaffected by the administrative cancellation procedure of the amended TmPA.
Because of the new simplified cancellation procedure which anyone can initiate, trademark owners are well advised to consistently document the use of their registered trademarks right from the beginning.
In the Blog Organhaftung Schweiz Dr. Christoph D. Studer regularly publishes articles regarding liability law.
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