Facts
The plaintiffs, Ecofin Holding AG, Ecofin Research and Consulting AG, Ecofin Data Model AG, and Ecofin Investment Consulting AG, filed a lawsuit against the defendant, Markus Scholand, with the Commercial Court of the Canton of St. Gallen on July 5, 2004. They requested the cancellation of the trademark "ECOFIN" in the Swiss trademark register and demanded a cease and desist declaration as well as damages. The defendant had registered the trademark "ECOFIN" in the Swiss trademark register on May 23, 2000.
The Commercial Court of the Canton of St. Gallen declined to hear the case, as it denied jurisdiction under Art. 5 No. 3 new LugC and Art. 16 No. 4 new LugC. The plaintiffs appealed this judgment.
Considerations
The Federal Court had to decide whether the plaintiffs' lawsuit is to be qualified as a declaratory action within the meaning of Art. 16 No. 4 new LugC. The lower court had denied this, as it considered the lawsuit to be an action for infringement and not a declaratory action.
However, the Federal Court came to the conclusion that the plaintiffs' lawsuit is indeed a declaratory action, as they requested the cancellation of the trademark "ECOFIN" in the Swiss trademark register. The plaintiffs dispute the validity of the trademark and claim that the defendant is acting unfairly in competition.
The Federal Court relied on the case law of the ECJ, according to which Art. 16 No. 4 new LugC applies to declaratory…