Facts
Dr. O.K. Wack Chemie GmbH (Plaintiff) developed a motorcycle cleaner called S100, which it has been distributing in Germany since 1980. From 1984 onwards, it exported the product to the USA, where Brookside Import Specialities Inc. (Defendant) took over the distribution. The Defendant had the S100 trademark registered in the USA and Canada in its own name, although the Plaintiff supplied the product to it. The collaboration between the parties ended in 1992. The Defendant then had the cleaner manufactured by a competitor of the Plaintiff.
In 1998, the Defendant also registered the S100 trademark in Switzerland and later filed an opposition against the Plaintiff's registration of the same mark. The Plaintiff then filed a lawsuit for the nullification of the Defendant's Swiss trademark.
Considerations
The Federal Supreme Court upheld the dismissal of the lawsuit by the lower instance. It found that the requirements of Art. 4 of the Trademark Protection Act (MSchG) for the exclusion of protection of an "agent's trademark" were not met. For this, a close temporal and spatial connection between the trademark registration and the contractual relationship between the parties would have been necessary.
The Federal Supreme Court stated that the terminated contractual relationship between the parties only concerned the US market. No contractual authorization of the Defendant to use the S100…