Requirements for proof of genuine use increasingly difficult to meet
Switzerland - Meyerlustenberger Lachenal
Examination/opposition
National procedures
May 22 2014
Nestlé Schöller GmbH & Co KG opposed the trademark KOALA'S MARCH, depicted below on the left,
based on its earlier KOALA mark (and device), depicted below on the right. Both marks covered biscuits.
Opposed mark Nestlé Schöller's mark
In Decision B-3294/2013 (April 1 2014), the Federal Administrative Court found that Nestlé Schöller had failed to prove the genuine use of its mark in the five years before the objection of non-use was raised. It left
open the question of whether use in the form depicted below was sufficiently close to the registered mark to
qualify as use:
The court noted that the mark as registered contained three repetitions of the word 'Koala', which the actual packaging did not. It came to the conclusion that, in any case, the proven average annual revenue of €8,000
did not amount to "genuine" use for everyday consumer goods such as biscuits.
The court requires very detailed evidence when it comes to actual use. It criticised the fact that most of the
sales figures could not be attributed to specific goods or packaging and, therefore, failed to prove actual
revenues. It also held, once again, that affidavits under German law (eidesstattliche Erklärungen) do not
have any special status under Swiss law and are not, per se, sufficient evidence. They do, however, carry
some weight if the person signing the affidavit is also offered as a witness.
The decision is a reminder that the Federal Administrative Court is ratcheting up the requirements for proof
of genuine use. The requirements have reached a level that is difficult to meet, even for sophisticated
trademark owners such as Nestlé Schöller. The actual use of the mark by its licensee, Kuchenmeister
GmbH, can hardly be doubted (use in Germany is sufficient under the 1892 agreement between Germany
and Switzerland).
Mark Schweizer, Meyerlustenberger Lachenal, Zurich
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