In terms of the Trademark Law Modernization Act (TMA), Germany has terminated the “Agreement between Switzerland and Germany Concerning the Mutual Protection of Patents, Designs and Trademarks” of 1892.
The agreement was concluded at the time between the Federal Council of the Swiss Confederation, on the one hand, and His Majesty the German Emperor, King of Prussia, on the other.
Probably the most relevant application of the German-Swiss Agreement for trademark owners was in the field of trademark law and in particular in the proof of the use of trademarks in a way that preserves the rights. In principle, only those acts of use are considered to be rights-preserving which take place in the respective state – i.e. in Germany in the case of German trademarks and in Switzerland in the case of Swiss trademarks. The German-Swiss Agreement has modified this principle so that acts of use in the respective other territory are also recognized as maintaining the rights. As a result, it was possible to successfully defend a German trademark against a request for cancellation due to non-use, which had not been used in Germany but in Switzerland, and vice versa. This was certainly very helpful for one or the other trademark owner, since presumably not every attorney was readily aware of this agreement and its consequences. Due to the TMA, the German-Swiss Trademark Agreement of 1892 had to be terminated, since it requires the use of the trademark within the national territory.
Consequences for the trademark owner:
If you are the owner of German or Swiss trademarks which are no longer in the grace period and which are only used in the other country, it should be checked whether use can be taken up in the country where trademark protection exists or whether new trademarks should be applied for.
In case you need us to review your trademark portfolio with respect to German and/or Swiss trademarks and their usage situation, our experts in this field will be happy to assist you.