Swiss courts confirm high threshold to evidence notoriety of trademarks in recent decisions regarding culinary brands

The Swiss Federal Administrative Court confirmed in two recent decisions concerning trademarks in the food sector the high threshold to evidence notoriety of trademarks.

In the first case, the owner of the the "sunday" trademark for baking goods such as baklava, tulumba and kadaifi opposed the extension into Switzerland of a third party's nearly identical international trademark, covering classes 29, 30 and 31. The opponent's "sunday" trademark was registered abroad, but not in Switzerland, requiring the opponent to base the opposition on the notoriety of its trademark.

In its appeal decision, the Swiss Federal Administrative Court confirmed the strict Swiss practice regarding the affirmation of trademark notoriety. Namely, as a rule, it is necessary to demonstrate that at least 50% of the Swiss public has knowledge of a trademark. In its judgment, the court did not recognise this level of notoriety despite a turnover of CHF 1.6 million over the last ten years in all parts of Switzerland and in spite of advertisements in print medias and on TV channels, targeting people of Balkan origin living throughout Switzerland. Specifically, the court stated that it is not sufficient to provide evidence that the trademark is notorious with the Swiss public of Turkish and Balkan origin; the opponent must demonstrate notoriety within the entire Swiss public. The court argued that foreign dishes have become increasingly popular and well known in Switzerland in recent years and today are not only available in specialty shops, but also sold by major Swiss food retailers.

As a consequence of this change in Swiss eating habits, the entire Swiss public is relevant when assessing the reputation of a food brand, whether it is a local or foreign food product.

The court expressly stated that in this regard a change has occurred in recent years and cited the 1994 YENI RAKI decision, which found that the respective relevant public was limited to Swiss consumers of Turkish origin.

In the second case, a restaurant and food chain co-owned by Nusret Gökçe op-posed the registration of the figurative Swiss trademark "Nusr-Et" for food products in classes 29 and 30, and restaurant services in class 43. Although the chain owned several registered trademarks abroad for the "Nusr-Et" sign, it held no trademark registration in Switzerland and based its opposition on the notoriety of its trademark.

The court stated also in this case that the notoriety of a trademark is not assumed easily and that it is not sufficient that the court and its justices know the trademark. In this case, the opponent's trademark was widely used and advertised abroad, but there was no evidence that this was also the case in Switzerland. The court stated that a trademark not used or advertised in Switzerland is presumed to lack notoriety with the Swiss public. Notably, it did not help that Nusret Gökçe is well known in social media with 21 million followers on Instagram at the time of the proceedings and that an emoji is dedicated to him. The court argued the fact that the person personalising the restaurant and food brand is famous does not necessarily apply to the restaurant and food trademark.

These decisions demonstrate once again that trademark owners (in all sectors) should not rely on trademark notoriety among only one part of the Swiss public, the fame of their trademark abroad or their general presence in social media. The threshold to reach trademark notoriety in Switzerland is extremely high and in the past notoriety of a trademark was only confirmed in exceptional cases. As a consequence, businesses entering the Swiss market should formulate a strategy early on to register their brands in Switzerland. This should be done in spite of the fact that trademarks are – after a five-year grace period – only enforceable if they have been used. Five years gives the trademark owner ample time to develop a presence in Switzerland and the requirements to demonstrate use of a trademark are much lower than proving its notoriety.

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