Termination of the Swiss-German Agreement of 1892 – what trademark owners have to consider

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Effective May 31, 2022, Germany has terminated the “Agreement between Switzerland and Germany Concerning the Reciprocal Protection of Patents, Designs and Trademarks” of 1892. For more than 100 years, this bilateral Agreement had provided for facilitations for owners of industrial property rights in the territory of the respective other contracting party. The exact reasons for the termination are not known, but the Agreement had already been criticized for some time as being outdated.

Termination of the Agreement particularly significant for trademark owners

The most important practical relevance of the German-Swiss Agreement was in the field of trademark law and here in considerable simplifications in the proof of genuine use of trademarks in revocation proceedings. Under both German and Swiss trademark law, the requirement of proof of genuine use of a trademark for the registered goods and services aplies five years after registration or after expiration of the opposition period. As a matter of principle, only those acts of use are considered to be relevant which took place in the respective territory – i.e. in Germany in the case of German trademarks and in Switzerland in the case of Swiss trademarks. This principle was modified by the German-Swiss Agreement to the extent that acts of use in the territory of the respective other party were also recognized as a suitable basis for genuine use. Thus, a Swiss trademark could be successfully defended against an application for revocation although it had not been used in Switzerland at all, but only had been used in Germany for the relevant goods and services, and vice versa. This modification of the principle of territoriality ceases to apply with the termination of the German-Swiss Agreement.

Relevance in terms of timing

The termination of the German-Swiss Agreement takes place ex-nunc, i.e. there is no retroactive effect of termination of the Agreement. Although much is still unclear in detail, there are indications that it will still be possible to rely on acts of use in the territory of the other party during the relevant period of the past five years, but only with regard to such acts of use until May 31, 2022. The full relevance of the termination of the Agreement will therefore only unfold after May 31, 2027, when all acts of use in the territory of the other party are outside the five-year period.

Considerations for the trademark strategy

Owners of German or Swiss trademarks who can only show use in the respective other part must prepare themselves for a deterioration of the use situation. It is particularly advisable to check the trademark portfolio for possible new applications for the respective trademarks (as far as permissible from the point of view of repeat applications) in order to maintain trademark protection.

Dr. Rudolf Böckenholt discusses in GRUR-Prax ECJ decision on missing a time limit for appeal during a pandemic

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In issue 10/2022 of “GRUR-Prax – Gewerblicher Rechtsschutz und Urheberrecht / Praxis im Immaterialgüter- und Wettbewerbsrecht” BOEHMERT & BOEHMERT partner and attorney at law Dr. Rudolf Böckenholt discusses a decision of the ECJ of March 24, 2022 (T-544/21, GRUR-RS 2022, 6292) on missing a time limit for appeal during the Covid-19 pandemic.

“Chaotic conditions during the Covid 19 pandemic are neither unforeseeable nor force majeure”

The court states that fortuity and force majeure only exist in the case of objective, extraordinary circumstances with inevitable consequences outside the sphere of influence of the affected party, against which the latter cannot subjectively take precautions without making unreasonable sacrifices in order to avoid a legal disadvantage.

At the time of service of the first-instance decision in the fall of 2021, the Covid 19 pandemic had not been an abnormal or unforeseeable circumstance, but had been known for more than a year, and restrictions on public and private life no longer changed this, insofar as the lockdown had not been complete. Appropriate precautionary and preparatory measures would have to be taken to ensure the processing of deadline-bound transactions within a prolonged global pandemic situation.

Dr. Böckenholt’s article in German can be found in the printed edition of GRUR-Prax 10/2022 of May 18, 2022 on page 297 or for subscribers of Beck-Online here.

Swiss Biotech Day: Dr. Ute Kilger on 3 May 2022 with her own panel on “Waiver for Covid Patents: Bleak future for biopharma industry?”

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The European Union has reached an agreement with the USA, India and South Africa on the framework conditions for a patent suspension for Covid19 vaccines. Finalisation and approval by the WHO member states is still pending.

But how will a restriction of intellectual property rights affect the biopharmaceutical industry? What are the consequences for future new medicines that are urgently needed in the global fight against serious diseases? And what measures could prevent the weakening of intellectual property while contributing to the supply of new, highly effective drugs to all people?

BOEHMERT & BOEHMERT patent attorney and partner Dr. Ute Kilger will discuss these questions at the Swiss Biotech Day on 3 May from 12:30 (CEST).
Jürgen M. Schneider, BIO Deutschland e. V., Dr. Rainer Strohmenger, Wellington Partners, as well as Philip Beushausen, dreissig24 GmbH, will complete the top-class panel.

More information on the Swiss Biotech Day 2022, its programme and a registration option can be found here.

ECJ declares German court practice regarding the (non-)granting of preliminary injunctions arising from patents to be contrary to European law

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As already reported in a June 2021 article in our B&B Bulletin, the Munich Regional Court has asked the European Court of Justice (ECJ) to rule on whether the German court practice regarding preliminary injunctions in cases of patent infringement is compatible with European law.

The issue here is that German higher regional courts (most recently including the Munich Higher Regional Court) regularly refuse to issue a preliminary injunction on the grounds of patent infringement if the validity of the patent in question has not already been confirmed in opposition or nullity proceedings. In this case, the successful examination procedure before the German Patent and Trademark Office or the European Patent Office is not considered sufficient to assume that the legal validity of the patent is certain. As a consequence, patent owners were regularly unable to obtain a preliminary injunction against an infringer unless third parties had previously (unsuccessfully) attacked the patent in question Therefore, this possibility of legal action ultimately depended on factors over which the patent owner had no control.

In view of the fact that the effect of a patent takes effect upon grant, the Munich Regional Court considered this practice to violate the right of the patent proprietor to effective interim measures, which arises from Union law (namely Directive 2004/48). At the same time, in the case on which the decision was based, the Munich Regional Court saw itself prevented by the binding effect of case law of the Munich Higher Regional Court from issuing a preliminary injunction, although it assumed both patent infringement and validity of the patent.

This situation prompted the Munich Regional Court to submit the practice of the Munich Higher Regional Court (and other higher regional courts) to review by the ECJ. In its judgment of April 28, 2022 (Case C-44/21), the ECJ has now clarified that a court practice is incompatible with European law whereby the grant of interim measures for infringement of patents is in principle refused if validity of the patent in question has not been confirmed at least in first instance opposition or nullity proceedings.

Furthermore, the ECJ clarified that national courts are obliged to modify any established case law contrary to this assessment, if necessary. In particular, the Munich Regional Court must not apply national case law that is incompatible with the ruling.

In principle, the ECJ thus significantly strengthens the rights of patent owners in preliminary injunction proceedings before the German courts. However, it remains to be seen how this will be reflected in judicial practice.