In a recent decision, the Swiss Federal Administrative Court upheld the cancellation of a trademark in the name of the founder of the International Olympic Committee. While the decision contains some interesting clarifications on the requirement for trademark use in Switzerland, it also provides lessons on how to protect the inheritance and goodwill associated with a deceased person.
Pierre de Coubertin is widely known as the founder of the International Olympic Committee (IOC) and the father of the modern Olympic Games. In 2002, the IOC applied for trademark protection for the name of its founder in Switzerland and registered the trademarks “DE COUBERTIN” and “PIERRE DE COUBERTIN” for a variety of goods and services, including, for example, books and clothes. The IOC has also had these marks registered abroad.
Tempting Brands is a Dutch brand development and licensing company that owns brands such as “ROUTE 66” or “Marie Antoinette”. Beginning in 2015, Tempting Brands sought to register “Pierre de Coubertin” as a brand of clothing and assorted products in several countries. This led to a number of disputes between the IOC and Tempting Brands around the world.
In Switzerland, the Tempting Brand was challenged by the IOC on the basis of its earlier trademark “PIERRE DE COUBERTIN”. In the following, Tempting Brands has filed cancellation claims against the two Swiss IOC brands. Under Swiss law, if a trademark has not been seriously used for a period of five years, any person may file a request for cancellation with the Federal Institute of Intellectual Property (IPI ). In its decisions of March 10, 2020, the IPI ordered the cancellation of the two IOC “DE COUBERTIN” formative marks. The IOC has appealed the decision concerning the trademark “PIERRE DE COUBERTIN”.
On appeal, the IOC argued that any use of “PIERRE DE COUBERTIN” by Tempting Brands would be illegal. Since Tempting Brands therefore had no legitimate interest in the cancellation request, the request constituted an abuse of rights. The IOC further argued that, contrary to the contested decision, the trademark “PIERRE DE COUBERTIN” had indeed been the subject of genuine use.
In its decision of 18 January 2022 (B-2382/2020), the Swiss Federal Administrative Court confirmed its case law according to which, in order to file an application for annulment, no interest of the requesting party was required. Cancellation requests can only be considered abusive in exceptional cases (see our September 2021 Newsletter). The arguments put forward by the IOC in this respect, in particular that the use of the sign by Tempting Brands would be unlawful, did not relate to the genuine use of the mark “PIERRE DE COUBERTIN” by the IOC as such, and therefore were considered outside the scope of the procedure. Consequently, the Court considered that the request for annulment did not constitute an abuse of rights.
As to the genuine use of the “PIERRE DE COURBERTIN” trademark, the Court found that the in-use investigation report submitted by Tempting Brands was sufficient to credibly demonstrate that the trademark had not object of serious use. Thus, as provided for by Swiss law, the IOC will have to demonstrate credibly that the mark has indeed been the subject of serious use.
As before the IPI, the IOC had argued on appeal that a museum or a museum shop could not be expected to achieve the same sales figures as a commercial enterprise. Even modest sales would suffice for serious use of a mark.
In this regard, the Court held that the standard for the required genuine use of a mark is the usual practice of commercially reasonable dealings in the relevant industry. The type, extent and duration of use as well as the circumstances of each case, such as the size and structure of the business in question, had to be considered. However, it was irrelevant whether the owner of the trademark was a commercial enterprise or a non-profit organization, since the trademark conferred the same rights on its owner.
The Court further considered that the evidence presented by the IOC, which mainly related to products sold in the Olympic Museum shop in Lausanne, an online game and a medal awarded for exceptional sportsmanship, was not sufficient to establish genuine use of “PIERRE DE COUBERTIN” as a registered trademark in Switzerland. Consequently, the Court found that the trade mark “PIERRE DE COUBERTIN” had not been the subject of genuine use and dismissed the appeal. The mark has since been removed from the Swiss Trademark Register.
The decision contains interesting considerations on the genuine use of a trademark under Swiss law. Although the assessment of genuine use allows to some extent to take into account the particular circumstances of the case, such as the size and structure of the trademark owner, the fact that the trademark owner is a commercial enterprise or non-profit organization is not relevant.
The key thing to remember is, however, that a mark may, in some cases, not be well suited to protect and preserve the legacy and goodwill associated with a deceased person. Since a Swiss trademark is subject to an obligation of use, it is threatened if it is only used as a reference to a person, but not to designate the products for which the trademark is registered. In this case, other means of protection may seem more appropriate and should be considered in addition to a trademark. In particular, protection as the name of a legal entity such as an association or foundation or protection under unfair competition law may be more promising.
Finally, by the way, the “Pierre de Coubertin” brand portfolio built by Tempting Brands was assigned to the CIO in the course of 2021. It was not specified whether this was a consequence of a regulation or a court decision. The IOC has thus rediscovered the brand name of its founder – at least for now.