Brands Update: use of a trademark in Switzerland is not sufficient

In 2008 Rivella filed a notice of opposition against the Community trademark (CTM) application ‘Baskaya’. The opposition was based on the earlier international figurative mark ‘Passaia’, covering a number of countries including Germany. Having been requested to provide proof of genuine use of the earlier mark, Rivella stated that the mark had only been used in respect of the German part of the international registration and submitted documents showing use in Switzerland. Rivella argued that use in Switzerland equals use in Germany, according to the Convention of 13 April 1892 between Switzerland and Germany on the reciprocal protection of patents, designs and trademarks.

The General Court stated that, in Community opposition proceedings, the question of determination of the territory in which use of the earlier mark must be established is exhaustively governed by Community Trade Mark Rules. Therefore, it is not necessary to refer to any provision of domestic law of member states. Genuine use of an earlier mark, be it a Community, national or international mark, must be proved in the European Union or in the member state concerned. The bilateral Convention between Germany and Switzerland does not bind the European Union. The proof of use of the mark in Switzerland did not show genuine use of the international mark in the Community…

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