Facts
C. GmbH and D. (Plaintiffs) sued A. GmbH (Defendant) regarding the registration of the trademarks "REICO" and "REICO VITAL-SYSTEME" in Switzerland. The Commercial Court of St. Gallen largely upheld the claim and decided that this was a case of an agent's trademark under Art. 4 TmPA, and therefore the Defendant did not enjoy priority protection for its trademarks. The Federal Supreme Court set aside the decision and remanded the case for re-evaluation, as the requirements for an agent's trademark had not been sufficiently clarified.Considerations
According to Art. 4 TmPA, trademarks do not enjoy protection if they are registered without the consent of the owner on the name of agents, representatives, or others authorized to use them, or if they remain registered in the register after the consent has been withdrawn. This ground for exclusion from protection requires that there was a contractual relationship between the trademark owner and the alleged agent that established a duty of the agent to safeguard the interests of the owner.
In the present case, the lower court was unable to establish such a contractual duty of loyalty of the Defendant towards the Plaintiffs based on the established facts. In particular, the shareholding relationships and declarations of intent to cooperate were not sufficient to assume a loyalty…