– July 19, 2023

Trademark registration in anticipation

Anyone who registers a trademark without actually using it and only in order to obtain financial compensation is acting in abuse of rights (BGer 4A_458/2022).

According to Art. 12 MSchG, the owner of a trademark must actually use it within five years of registration so that his right to it is not extinguished. This was confirmed by the Federal Supreme Court in the present decision. The use must be in accordance with the function of the mark, so that the market sees it as a distinctive feature. A mere symbolic use, which only serves to maintain the right to the trademark, is not sufficient for this – the trademark must be used much more in the course of business.

The Federal Supreme Court further states that it is abusive if the trademark registration was not made for the purpose of using it, but to prevent registration by a third party or to obtain financial compensation or other benefits from an existing user of the sign.

The consequence: The trade mark registration is abusive and the associated trade mark is invalid.

If you have any questions Intellectual property law, our lawyers will be happy to advise you.