Facts
The appellant, [X.] Finance Ltd., and the respondent, [Y.] Limited, are two companies operating in Switzerland. The respondent has registered the sign "G5" as a trademark under No. qqq for goods in classes 1, 3, 5, and 32 internationally. The appellant, in turn, has made several trademark registrations with the component "G5", but for products other than food supplements.
The respondent requested the appellant to cease using the sign "G5" for the trademark designation of organic silicon-containing food supplements. The appellant refused, whereupon the respondent filed a lawsuit. The Commercial Court of the Canton of Aargau upheld the lawsuit and prohibited the appellant from using the sign "G5" in isolation or with the addition "Silicium organique" for the trademark designation of organic silicon-containing food supplements.
The appellant appealed this judgment with a complaint in civil matters to the Federal Court and requested that the respondent's demands be dismissed. The respondent requested that the appeal be dismissed and the contested judgment be confirmed.
Considerations
The Federal Court first examined whether the appeal in civil matters is admissible. It found that the appeal in civil matters is admissible regardless of the amount in dispute, as it concerns a civil law dispute under the TmPA.
Then, the Federal Court examined the protective effect of the international registration of the sign "G5" and came to the conclusion that the plaintiff's trademark "G5" was validly registered for Switzerland and enjoys full trademark protection pursuant to Art. 13 TmPA.
The Federal Court also dealt with the appellant's objection that it had a better right to use the disputed sign "G5" due to its own (older) registered…