Davidoff’s COOL WATER mark for Class 25 goods held to be null and void

In Zino Davidoff SA v K & L Ruppert Stiftung & Co (Case 4A_242/2009, December 10 2009), the Supreme Court has affirmed a decision of the Cantonal Court of Fribourg in which the latter had held that K & L Ruppert Stiftung & Co’s registration for the trademark COOLWATER for goods in Class 25 of the Nice Classification was valid. 
In 1987 Swiss company Zino Davidoff SA registered the complex trademark DAVIDOFF COOL WATER for perfumes and cosmetics in Class 3. In 2000 it registered COOL WATER for various goods in Classes 3, 21, 24 and 25.
German company K & L has owned an international registration for the word mark COOLWATER for clothing since 1990. K & L filed an action before the Cantonal Court of Fribourg, requesting that Davidoff’s registration for COOL WATER be declared null and void in all classes. In its counterclaim, Davidoff requested that the Swiss part of K & L’s registration be declared null and void on the grounds of bad faith. In particular, Davidoff claimed that:

  • K & L’s registration was defensive; and
  • K & L sought to take advantage of Davidoff’s reputation.
Based on the priority of K & L's filing date, the Cantonal Court partially upheld its claim and declared that Davidoff’s registration was null and void for goods in Class 25. Davidoff appealed.
The Swiss Supreme Court dismissed the appeal. It held that there was no risk of confusion between the marks because perfumes and cosmetics in Class 3 and clothing in Class 25 were not similar under the Swiss Trademark Act. Moreover, the fact that a party is aware of prior use of the mark by a third party is not sufficient to establish bad faith.
Nevertheless, the court pointed out that a registration can be considered to be defensive if the Trademark Office was aware that a third party was using - or planned to use - the mark for identical or similar goods. In the present case, since Davidoff used COOL WATER only for goods in Class 3, and these goods were not similar to goods in Class 25, K & L’s registration for COOLWATER in Class 25 could not be considered to be defensive. The court also dismissed the claim that K & L had registered the mark in anticipation of Davidoff’s expansion into clothing, concluding that Davidoff had failed to substantiate this allegation.
Lucas David, Walder Wyss & Partners, Zurich

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