Cosmetics company far from 'made-up' as Swiss Court holds that sales to a subsidiary do not constitute use

Pierre Fabre is a French multinational pharmaceutical and cosmetics company.  They manufacture and supply cosmetics products including a face cream sold under the trade mark ELUAGE.  The mark is used and registered worldwide including in Switzerland for skin care products.

Sofar Swiss AG, a Swiss wholesaler, filed an application in Switzerland for the similar mark YALUAGE in respect of skin care products.  Pierre Fabre opposed Sofar's application.

Sofar defended the opposition, claiming that Pierre's earlier mark had not been used in Switzerland and was therefore not a valid earlier registration.

Genuine 'Use'

If a trade mark has not been genuinely used in Switzerland for a period of 5 years or more it is vulnerable to revocation from the trade mark register.  The Swiss Trade Mark Office rejected Pierre's opposition to registration of the Sofar mark on the basis that it could not prove use of the ELUAGE mark in Switzerland.

However, following the decision of the Swiss Trade Mark Office, Pierre filed evidence of use of the mark ELUAGE in the form of deliveries to its Swiss subsidiary following receipt of which the opposition was accepted in respect of some goods and services.

Appeal

Sofar appealed the opposition decision to the Swiss Federal Administrative Court which overturned the decision and granted registration of YALUAGE.  Although the evidence filed by Pierre showed evidence of deliveries to a subsidiary there was no evidence to show that the goods were then sold to retailers or end customers or consumers in Switzerland.    The Court held that sales made within a group of companies does not constitute 'use' in commerce and consequently the opposition was dismissed.

Caution

It is extremely difficult to show evidence of use of a trade mark in Switzerland.  There have been a number of earlier decisions from the Swiss Federal Administrative Court where the requirements for proof of use has proved to be very difficult to meet.    The strict requirements result in confusingly similar trade marks being allowed to co-exist on the Swiss register.

What constitutes use is different in each member state and is generally easier to prove.  This is certainly the case at the EU Intellectual Property Office in respect of EU trade marks and also in the UK.