It is a general trade mark law principle, which also applies in Germany and Switzerland, that after five years of being registered (the so-called “grace period”) a trade mark registration becomes vulnerable to proof of use in an opposition or revocation for non-use. If the use of the registered trade mark is challenged, it is also a common principle, that only use in a jurisdiction where the trade mark enjoys protection is considered sufficient and right-preserving use.

The Swiss/German agreement about genuine use

Since 1892, there has been a special situation regarding the use requirements for trademarks between the countries of Germany and Switzerland. The “Agreement of 13 April 1892 between Switzerland and Germany on Reciprocal Protection for Patents, Designs and Trade Marks” (“Swiss/German Agreement”) states that the legal disadvantages which, under the laws of the contracting parties, occur when a trade mark has not been used within a certain period of time are precluded if the use takes place in the territory of the other party. That means that it is sufficient to prove genuine use of a trade mark in either Germany or Switzerland provided it is registered in both countries. That way use of a trade mark in Switzerland could be submitted as a defence in non-use cancellation proceedings as proof of genuine use in Germany and vice versa. This arrangement has now ended after 130 years because the agreement has been terminated by Germany effective 31 May 2022.

Impact of European Union Regulation and Case Law

While the Swiss in practice accepted the use of an EUTM in Germany as sufficient to prove genuine use of the same Swiss trade mark, the European Court of Justice (ECJ) clarified that the use of a Swiss trade mark could not constitute sufficient use of an EUTM. The use of an EUTM is exhaustively and exclusively governed by EU law and the use requirement has to be interpreted autonomously and independent from national laws including conventions concluded by Member States. Therefore, the use of a Swiss trade mark could not be considered as use of an EUTM.

The termination of the Swiss/German Agreement followed the ECJ’s “Testarossa” decision which was laid down on 22 October 2020 (see a BrandWrites article about the decision here). In this decision the ECJ declared the Swiss/German Agreement to be incompatible with EU law. It was clarified that the European Union’s understanding of genuine use of a trade mark “in the Member State concerned” does not include the use of a trade mark in a non-member State, such as Switzerland. Without further interpreting or considering the Swiss/German Agreement the ECJ did emphasize that Germany had the obligation to terminate the agreement if it could not eliminate its incompatibility with EU law otherwise (see Art. 351 TFEU).

Outlook – Genuine use in Germany and Switzerland

From now on trade mark proprietors in Germany and Switzerland can no longer rely on the mutual recognition of genuine use previously provided for under the Swiss/German Agreement. For cases concerning trade marks that were already registered for more than five years and in use prior to the termination of the Swiss/German Agreement, evidence of use from the other country will probably still be accepted and decisive in Germany and Switzerland respectively.

For the future, trade mark proprietors in Germany and Switzerland should assess carefully whether their trade marks are sufficiently used and therefore protected in both countries. Any use of trade marks should be carefully documented in both countries.