Facts
The companies Ecofin Holding AG, Ecofin Research and Consulting AG, Ecofin Data Model AG and Ecofin Investment Consulting AG (hereinafter referred to as the plaintiffs) brought an action against Markus Scholand (hereinafter referred to as the defendant) before the Commercial Court of the canton of Saint-Gall. The plaintiffs requested the cancellation of the trademark « ECOFIN » registered by the defendant in the Swiss trademark register, invoking a better priority and an infringement of their right.
The defendant raised a plea of lack of jurisdiction, arguing that the Swiss court was not competent to rule on the validity of the trademark. The Commercial Court upheld this plea, considering that Article 16, para. 4, of the Lugano Convention (CL) did not apply in this case, as it was not an action for annulment of the trademark, but an action for unfair competition.
Considerations
The Federal Court examined the interpretation of Article 16, para. 4, CL, which grants exclusive jurisdiction to the courts of the place of registration for disputes relating to the validity of a trademark. The Court considered that this provision applies to disputes that concern the validity or registration of a trademark, including annulment actions.
The Court also examined the case law of the Court of Justice of the European Communities (ECJ) regarding the interpretation of Article 16, para. 4, of the Brussels Convention, which is similar to Article 16, para. 4, CL. The ECJ considered that this provision applies to disputes that concern the validity or registration of a trademark, but not to disputes that concern the ownership or title to a trademark.
The Court concluded that the action brought by the…