Federal Administrative Court: affidavits have no special probative value
Both marks covered clothing. Paper Denim disputed the genuine use of the earlier mark. Both the Intellectual Property Office and the Federal Administrative Court on appeal (Decision B-6251) held that Peek & Cloppenburg had failed to prove the genuine use of its earlier mark during the relevant period (between April 2007 and April 2012).
Under the Swiss-German treaty of 1892, it is sufficient if genuine use is proven for Germany. Peek & Cloppenburg submitted an affidavit by its in-house counsel that the mark had been used in Germany, which was supported by photographs of clothing labels (some showing the mark as registered, others showing use in a different form, as depicted below).
The labels were in German. The date was added to the photographs through handwritten notes. Peek & Cloppenburg further showed that the item numbers visible on some of the labels were the same as those in its internal database ('Warenbewirtschaftungssystem'), and that considerable numbers of each item had been shipped.
The Administrative Court held that use of the mark in the form depicted above did not amount to genuine use of the mark as registered, as the overall impression of the script was very different.
With regard to the labels that did show the mark as registered, the court confirmed its case law that affidavits ('eidesstattliche Versicherungen') have no special probative value in Switzerland.
This left Peek & Cloppenburg in a difficult spot: according to the court, all its evidence was "mere party allegations" originating from its own sphere of influence. While the German text on the labels made it probable that the items were destined for the German market, Peek & Cloppenburg had failed to prove that the items had actually been put on the German market. It had also failed to prove that the items had been put on the market within the relevant timeframe. The excerpts from the internal database were not probative either, as again the content of the database was in the sole control of Peek & Cloppenburg.
Like the Koala case earlier this year (Decision B-3294/2013), the present case shows that it is increasingly difficult to prove genuine use. Most evidence concerning genuine use will "originate from the sphere of the proprietor". If this evidence is not given any weight, the trademark owner will often be unable to prove genuine use of its mark. German owners of Swiss trademarks must be aware that Swiss courts will largely ignore affidavits that would be perfectly suitable to prove genuine use in Germany.
Mark Schweizer, Meyerlustenberger Lachenal, Zurich
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