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Stefan Schröter
The large Swiss retailer Migros sued the watch manufacturer Mondaine Watch Ltd for transfer or cancellation of the trade marks M-WATCH MONDAINE and . Mondaine had registered those marks while supplying watches to Migros, which uses the upper-case “M” as a trade mark for many goods. One of the key questions in the rather complex litigation was whether Mondaine had been actually using the marks -WATCH MONDAINE and
. The Commercial Court of Zurich, in the first instance, found actual use of both marks. In the case of the
mark, the Commercial Court held that use as
was sufficient, as the sign actually used (with the Swiss cross in the circle) would not differ significantly from the registered mark. The trade mark M-WATCH MONDAINE was also actually used. The use of the element M-WATCH in the upper part of the watch dial with use of the element MONDAINE in the lower part of the watch dial was considered insufficient. However, the Commercial Court noted that the trade mark was used as a whole on the watchbands, too, which was sufficient to preserve Mondaine’s rights in the mark.
On the appeal of Migros the Swiss Federal Supreme Court affirmed that M-WATCH MONDAINE was sufficiently used, but came to a different conclusion regarding the use of .
Because the sign M WATCH as such would lack of distinctiveness, the Federal Supreme Court held the graphical element of the circle between the letter “M” and the word “WATCH” was the characteristic element of the trade mark . In view of the weakly distinctive nature of the Trademark
, the Federal Supreme Court ruled that it must be used in an almost identical way to preserve the trade mark rights. The replacement of the empty circle by a circular Swiss cross was not a merely insignificant deviation and use of the sign
therefore insufficient to preserve Mondaine’s rights in the mark
.
The Federal Supreme Court remitted the decision to the Commercial Court of Zurich to assess whether the trade mark M-WATCH MONDAINE had been registered unlawfully by Mondaine as an unauthorised agent of Migros.
The decision confirms that the similarity of the sign actually used and the registered mark must be very high to preserve the exclusive rights in the mark, much higher than the similarity required for likelihood of confusion. For trade mark owners, the decision serves as a reminder to file for additional trade marks if the sign actually used differs from the registered sign. Whenever possible, marks should be registered as word marks, not marks with figurative elements, because it is easier to show actual use of word marks (which are, in principle, protected if used in any legible script or form).
