Facts
Hachette Filipacchi Presse SA (Plaintiff) has been publishing the cinema magazine titled "PREMIERE" since 1976, which is also distributed in Switzerland. The Plaintiff is the owner of the IR trademark No. 650'865 "PREMIERE", which was filed in France on June 29, 1995. In Switzerland, protection for the mark was provisionally refused on March 27, 1997, but then definitively granted by the Swiss Federal Institute of Intellectual Property (IGE) on December 8, 1999 for the goods and services in Classes 9, 14, 18, 25, 28, 35, 38, 39, 41, and 42.
Paris Première SA (Defendant) has been operating a French television channel since 1986. The Defendant is the owner of the IR trademark No. 690'780 PARIS (below) PREMIERE (text in red and black bars), which was filed in France on December 2, 1997. In Switzerland, protection for the mark was provisionally refused on May 4, 1999, but then definitively granted by the IGE on July 27, 2000 for the goods and services in Classes 38, 41, and 42.
With a claim filed on January 24, 2001, the Plaintiff requested the Commercial Court of the Canton of Bern to declare the Swiss part of IR trademark No. 690'780 null and void. The Commercial Court upheld the claim.
By way of appeal, the Defendant requests the Federal Supreme Court to set aside the judgment of the Commercial Court and dismiss the claim. The Federal Supreme Court sets aside the contested judgment and remands the dispute for a new assessment to the lower instance.
Considerations
The Federal Supreme Court examines whether the trademark "PREMIERE" of the Plaintiff belongs to the public domain and is therefore excluded from trademark protection. It concludes that the term "PREMIERE" as a noun for a magazine dealing with films and television is descriptive and laudatory for the addressees. Even if the word "PREMIERE" can also be used as an adjective, the decisive factor is that in the specific context of use, it is understood as a noun with the obvious meaning…