Facts
I. AG, registered in the Commercial Register on December 20, 1979, with its registered office in Bolligen (BE), sells, among other office supplies, computer accessories under the brand i.-data. I.com AG, registered in the Commercial Register on March 10, 1982, with its registered office in Chur, also sells computer accessories. By letter dated September 13, 1988, I. AG warned I.com AG that the two companies were confusingly similar.
On August 17, 1989, I. AG filed a lawsuit with the District Court of Plessur against I.com AG, both under corporate and trade name law as well as under the Unfair Competition Act, for an injunction against the use of the name "I.com" and for a change of the company name. The District Court denied the risk of confusion and dismissed the claim. However, on appeal by the plaintiff, the Cantonal Court of Graubünden, in a judgment dated November 6, 1990, affirmed the risk of confusion and the claims asserted under corporate and competition law, but upheld the district court's judgment on the grounds that the plaintiff had forfeited its claims through inaction over six and a half years.
Considerations
The Federal Supreme Court finds that the forfeiture of claims for removal and injunction under corporate and competition law generally requires that the entitled party has tolerated the infringement of its rights through the concurrent use of an identical or similar mark for a longer period of time without objection, and that the infringer has in the meantime acquired its own valuable proprietary interest in the mark.
Delayed exercise of rights can also be abusive if it is due to negligent or even blameless ignorance of the infringement. In such cases, the prohibition of abuse of interests replaces the prohibition of contradictory behavior, which requires fault. The decisive factor is whether, in view of the lack or disproportionately low…