Risk of Confusion between Companies and Brands of the Securitas Group and the Defendant's Company and Brands

Facts

Securitas AG Swiss Security Company (Plaintiff 1) was founded in 1907 and is the owner of several word marks and word/figurative marks, including the mark "Securitas" registered in October 1977 for key holders with identification tags, signals, control apparatus and devices, as well as magazines. On April 1, 1993, it registered the service mark "Securitas" for security services, security escort, home care, order services, rental of security equipment, security training and consulting, deposit and safekeeping of keys, lost property service for access control tags, performance of public duties, telephone order service, operation of an alarm center and "emergency response services".

Securitas Direct AG (Plaintiff 2) was founded in 1992 as a subsidiary of Plaintiff 1 and is the owner of the word/figurative mark "Securitas Direct" registered on February 18, 1992.

Securiton AG (Plaintiff 3) was founded in 1948 and has specialized in the development and manufacture of alarm and security systems for 40 years. It is the owner of several word/figurative marks containing the element "Securiton".

The Securitas Group also includes Securisoft AG (Plaintiff 4), founded in 1988, which is engaged in the development, production, distribution and maintenance of software for information and control systems in the field of security and alarm technology.

Securicall AG (Defendant) was registered in the commercial register on October 18, 1996 with its registered office in Wangen-Brüttisellen (Canton of Zurich). On January 24, 1997, it registered four marks intended for the international classes 9, 38 and 42: "Securibasic", "Securidata", "Securitop" and "Securiisdn".

Plaintiff 1 had registered the mark "Securicall" intended for classes 9, 38 and 42 on September 27, 1996, after learning of the impending establishment of the Defendant.

Considerations

The Federal Supreme Court partially upheld the appeal of the Plaintiffs.

The lower court had considered the registration of the "Securicall" mark by Plaintiff 1 as an abuse of rights and declared it null and void in partial upholding of the counterclaim. The Federal Supreme Court confirmed this decision, as Plaintiff 1 had registered the mark to protect its established signs in the market after learning of the impending establishment of the Defendant.

Regarding the risk of confusion between the companies of Plaintiffs 1 and 2 and the…