Lawful Use of Third-Party Trademarks by a Garage to Promote its Own Services

Facts

Volkswagen AG (Plaintiff 1) and Audi AG (Plaintiff 2) filed an action against Garage X. AG (Defendant) for the unauthorized use of their "VW" and "Audi" trademarks in the Defendant's advertising. After the termination of the official representation contract with AMAG, the Defendant installed a new illuminated sign on the roof of its garage, featuring the "VW", "Audi" and "Specialist" marks. The Plaintiffs brought the case before the Commercial Court of the Canton of Zurich to prohibit the Defendant from using their trademarks. The Commercial Court dismissed the claim, as did the Cantonal Court of Cassation of Zurich. The Plaintiffs then filed an appeal with the Federal Tribunal.

Considerations

The Federal Tribunal dismissed the appeal. It considered that the Defendant's use of the "VW" and "Audi" trademarks in its advertising was not unlawful, as it clearly related to its own offers and services for vehicles of these brands. The Federal Tribunal reiterated that the trademark owner cannot prohibit a third party from using its trademark to promote its own products or services, as long as this use does not create the misleading impression of a special link between the trademark owner and the advertising party. In the present case, the Federal Tribunal considered that the Defendant's…