New decision raises concerns for trademark owners

In Mundipharma SA v Sanofi Pasteur MSD SNC (Case B-576/2009, June 25 2009), the Federal Administrative Court has dismissed an opposition against the registration of the device mark TARGIN.

Mundipharma SA applied for the registration of the figurative trademark TARGIN (and wave design). Sanofi Pasteur MSD SNC opposed the application based on an earlier registered trademark consisting of the stylized image of a wave in black and white.

The Swiss Federal Institute of Intellectual Property upheld the opposition on the grounds that there was a likelihood of confusion between the marks. The Federal Administrative Court reversed.

Instead of finding that there was no likelihood of confusion between the marks, the court held that the earlier mark was unenforceable because it had not been used properly. The court pointed out that Sanofi Pasteur had used its wave device mark in blue and turquoise, together with the words 'Sanofi Pasteur MSD'. The court concluded that such use was insufficient to avoid abandonment of the mark, as use of the wave device in colour changed the overall impression of the mark. The addition of the word element 'Sanofi Pasteur MSD' reinforced the fact that the mark as used differed from the mark as registered.

The decision is troublesome for trademark owners. So far, practitioners had assumed that a registration in black and white could be used in any colour. However, should this new approach be embraced by the courts, applicants will have to register their marks in all the colours that they actually use. They will also have to register device marks in conjunction with any (non-descriptive) word elements that they may use. Failing this, a trademark may be deemed to be unenforceable due to a lack of proper use.

Trademark owners are thus advised to check their Swiss portfolio and ensure that their marks as registered are actually in use.
Mark Schweizer, Meyer Lustenberger, Zurich

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