Non-use justified by foreign opposition action

In Lancôme Parfums et Beauté & Cie v Focus Magazin Verlag GmbH, 4C.331/2003, the Swiss Federal Court has dismissed the plaintiff's action to cancel the mark FOCUS for non-use. It held that the German defendant had good reasons for not using the mark because, among other things, it had been subject to an opposition action in the defendant's home country.

Focus Magazin Verlag GmbH, a German publishing company, owns an international trademark registration for FOCUS in various classes of the Nice Classification, including Classes 3 and 5. This registration covers Switzerland and is based on a German FOCUS registration.

In 2002 French firm Lancôme Parfums et Beauté arranged for an investigation on Focus Magazin's use of FOCUS for goods in Classes 3 and 5 in Switzerland and Germany. It discovered that the mark had not been used for goods in those classes during the requisite five-year period. Lancôme therefore applied to extend registration of its international trademark COLOR FOCUS to Switzerland for goods in Classes 3 and 5. In addition, it filed a non-use cancellation action with the Commercial Court of the Canton Bern on December 30 2002 against the Swiss portion of Focus Magazin's international mark.

In response, Focus Magazin argued that an opposition proceeding against its German FOCUS registration had only been resolved on January 11 2001 and, therefore, the five-year period had only started to run from that time. The Commercial Court rejected Lancôme's claim and it appealed to the Swiss Federal Court.

The Federal Court dismissed the appeal. It noted that Article 12 of the Swiss Trademarks Law stipulates that non-use may be justified where the defendant has good reasons. As the German FOCUS registration was subject to an opposition proceeding in Germany until January 11 2001, the Federal Court held that this was sufficient justification for non-use. Thus, the five-year period was suspended during this proceeding and only started once the proceeding had been resolved. The Federal Court explained that it would not be reasonable for a mark owner to start using its trademark in Switzerland as long as there was a risk that it would be cancelled due to an action against its home country registration introduced within the five-year period.

J David Meisser and Bettina Bochsler, Meisser & Partners, Klosters