NEWS
NEWS MAY-JUNE 2009
Trademarks - Switzerland:
Regional exhaustion of patent rights
The Federal Council has decided to put the amendment of the Patent Act with regards to the question of exhaustion into force as of 1st July 2009.
A consequence of this amendment is that patented products falling which have been put in circulation into the European Economic Area with the agreement of the patent owner may be imported into Switzerland without the agreement of the patent owner.
However, for goods for which the prices are fixed by the Swiss Confederation and foreign states, notably pharmaceuticals, the Federal Chambers have decided that their importation will continue to be subjected to the agreement of the patent owner (national exhaustion of patent rights prevails).
For more information on the exhaustion of patent rights:
http://www.ejpd.admin.ch/ejpd/fr/home/dokumentation/mi/2009/2009-05-29.html
Designs- Switzerland:
Protection of the presentation of a product
“Plastic-Clogs”- This decision of the Court from Bern concerned a court action from the importer for Crocs shoes in Switzerland (plaintiff) for plastic clogs from the US company Crocs Inc. against the importer for Holey’s shoes from the Canadian company Holey Soles Holdings Ltd. (respondant) (published in SIC! 05/2009). Crocs Inc. commercializes coloured plastic clogs, in particular the models “Beach” and “Cayman”. Holey Soles Holdings Ltd. also produces plastic clogs, in particular the model “Explorer”. All these shoe models, are not registered in Switzerland (no three-dimensional trademark nor design registration). The plaintiff argued that the models “Beach” and “Cayman” may be confused with the model “Explorer” and invoked unfair competition from the respondant.
The decision confirmed that Art. 3 lit. d. LCD (Swiss unfair competition law) protects the presentation of a product ONLY if it has a distinctive character, i.e. it may be perceived as a commercial identifier of the company at the origin of the product. In order to preserve the freedom to imitate forms which are not protected by a trademark or a design right, the requirements for supporting and fulfilling a distinctive character of a presentation are quite high.
In the present case, the characteristics of the plastic clogs “Beach” and “Cayman” are technically necessary or are constituted by simple geometric forms and are therefore completely devoid of any distinctive character. Further, it is stressed that an unusual variety of colours for shoes should NOT be taken into account in judging the distinctive strength as basic colours cannot be monopolized. The fact that the company Crocs Inc. has acquired notoriety in the public is not a sufficient justification that its two models “Beach” and “Cayman” have also acquired notoriety among the public.
As a conclusion, the imitation of the presentation of a product lacking distinctive character is not per se prohibited under the angle of unfair competition law (Art. 2 LCD). As long as the respondant has used another trademark, which has been recognised in the present case, it showed its intention to avoid exploiting the product of the plaintiff on an unfair parasitic and malicious art under the sense of Art. 2 LCD.
Patents - EPO:
The Republic of San Marino (SM) has ratified the European Patent Convention and will become the 36th member state of the European Patent Organization on 1st July 2009.
For the list of the European Patent Convention member states as of 01.07.2009, please consult:
http://www.epo.org/about-us/epo/member-states.html
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