Swiss Federal Court favours trademark use over registration

Switzerland

In Schweizerische Radio- und Fernsehgesellschaft v Puls Media AG, the Swiss Federal Court has ruled that the defendant's use of its trademark PULS for a health magazine constitutes infringement of the plaintiff's prior rights in the unregistered mark 'Puls' for a television programme. This casts some doubt on the principle that a registered mark should prevail against unregistered signs, as provided by Swiss trademark law.

When its health programme 'Puls' became popular, Swiss television company Schweizerische Radio- und Fernsehgesellschaft (SRF) entered into an agreement with an editor to publish an accompanying monthly journal called Puls. Puls Media AG, the company created subsequently, later registered the title as a trademark. Even though the agreement between SRF and Puls Media terminated after a few years, Puls Media continued to publish its magazine under the PULS mark. SRF brought a civil action for trademark infringement and unfair competition.

Both the Zurich Court of Commerce and the Swiss Federal Court found in favour of SRF. The courts reasoned that because SRF created the title and had used it for 10 years, it had prior and stronger rights in the name. Therefore, Puls Media should have looked for a new name for the magazine when the agreement terminated, even though it owned the registration for the PULS mark. Because it did not change the magazine's name, the courts considered that it intended to create confusion as to the magazine's origin - an act explicitly prohibited under the Swiss Unfair Competition Act.

This ruling shows that Swiss courts still recognize common law trademark rights, even though the Trademark Act of 1993 suggests that a registered mark should prevail against unregistered signs. The Federal Court may also have come to the same conclusion without the need to consider common law rights if it had discussed whether (i) the programme's name is protected as a well-known mark pursuant to Article 6bis of the Paris Convention for the Protection of Industrial Property, or (ii) Puls Media's mark PULS may be considered a registration in the name of an agent or representative of the proprietor pursuant to Article 6septies of the Paris Convention. Unfortunately, the court did not make any reference to the convention in its decision, thus demonstrating that the national courts are reluctant to apply international agreements, and the Paris Convention in particular, directly into Swiss law.

Lucas M David, Walder Wyss & Partners, Switzerland

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