Well-known trademarks in vogue in Switzerland

On the 8 of March 2011, the Max Planck Institute urged for the delineation of the concept of exploitation of a trademark in order to be qualified as being a well-known trademark. The concept of well-known trademark can have pretty narrow definition depending of the European country where you stand. The question has certain acuity as it is important to take into account the juridical environment of a case before launching a dispute in an alien juridical system. Some adjacent countries bordering the French hexagon developed a peculiar concept of the well-known trademark. It is juridical security which fuelled the creation of the principle of well-known trademark.  If trademark rights do not exist ab initio but are obtained thanks to registration, in addition of the registration the well-known trademark must satisfy a myriad of criteria.

Swiss Law and law of the Liechtenstein protect heavily well-known trademarks, however there is no such thing as an article which states the criteria which must be fulfilled. The criteria are praetorian in nature. To give a glimpse of the strictness of these criteria one can tell that the trademark must have been intensively used in Switzerland thanks to an intensive commercial campaign. The plaintiff must enclosed relevant records evidencing its radiation on the said territory. Additionally, the plaintiff must prove that its trademark has a positive impact on citizens, which is highly difficult to demonstrate as one can imagine. Each and every trademark must go through crisis period, as a result it is as easy as a pie to find proofs showing the derogatory character of a trademark, it is more tricky to prove the converse.

We cannot but think at SMOBY which was not recognized as a well-known trademark under Swiss law. Notwithstanding a Swiss Court acknowledged the well-known character of the trademark VOGUE on the 31st of January 2012. As case law recognizing the well-known character of a trademark is scarce, this case law seems to be an oddity in the Swiss landscape. The Swiss Court was very prosaic in its rationale. It assessed the trademark regarding its “penetration in the collective awareness” and disregarded the number of subscribers to the magazine in Switzerland. Undoubtedly, it is superfluous to take into account the number of subscribers of a magazine in order to retain its well-known character. The luxurious market being drive by the principle “small is beautiful” the number of owners of an object does not imply that the trademark is well-known. The Swiss Court gave a telling example. As owners of cars bearing luxurious brands are scarce, it cannot be a proof of the well-known character of a trademark.

As far as extrajudicial proceedings are concerned, up to this day only four disputes have been tackled by the WIPO bearing on the “.li” extension and only eight on the “.ch” one.

Needless to say that launching an extrajudicial or judicial dispute in Switzerland or in Liechtenstein deserves an upstream research. It is sometimes better to abstain rather than spending heavy costs for a doubtful success.