Opposition dismissed due to lack of genuine use
The Swiss Federal Administrative Court has upheld a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had dismissed an opposition filed by the owner of the registered trademark YO against the registration of the figurative mark YOG for non-alcoholic beverages in Class 32 of the Nice Classification (Case B-7191/2009, April 8 2010).
Eckes-Granini, a fruit beverage company, is the owner of the earlier registered mark YO for good in Classes 5, 29, 30 and 32, including fruit beverages and fruit juices. The applicant for the registration of the YOG mark was the International Olympic Committee - 'YOG' being the abbreviation of 'Youth Olympic Games'. The figurative element of the YOG mark consisted of the five Olympic rings.
The IGE rejected the opposition and Eckes-Granini appealed. The Federal Administrative Court rejected the appeal and affirmed the dismissal of the opposition.
In particular, the court held that the YO mark had been used only in two instances during the relevant period (ie, from October 6 2003 to October 6 2008), both of which involved the sale of 2,160 litres of orange and multivitamin juice, respectively. The goods had been shipped to a beverage dealer in Samnaun, a small territory in the east of Switzerland, which is exempt from customs duty.
The court deemed that use of the YO mark on 4,320 bottles of fruit juice did not constitute genuine use of the mark. The notion of 'genuine use' depends on what is considered normal in terms of economically sensible behaviour. In this respect, the structure of the market, as well as the size and structure of the trademark owner's business, must be taken into account.
In the present case, the court found that the goods at issue (ie, fruit juices) were sold in large quantities throughout Switzerland at a very moderate price. Therefore, the sale of a small quantity of fruit juice to a single customer in a remote territory of Switzerland was considered to be inadequate to establish genuine trademark use.
Finally, the court held that the treaty between Switzerland and Germany on IP rights (1892) was not applicable in this case since Eckes-Granini is domiciled in Austria.
Peter Heinrich, Streichenberg Attorneys-at-Law, Zurich
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