Facts
Jenaer Glaswerk Schott & Gen., a German company, is the owner of several marks containing the name Schott, including the international mark Schottglas, registered in Switzerland since 1927 for products such as optical glass, glass tools, glass instruments, etc. The American company Micro Beads Inc. registered the mark GLAS-SHOT in Switzerland in 1962 for abrasive ice. The Cataphote Corporation, which acquired the rights to the mark GLAS-SHOT, was sued by Jenaer Glaswerk Schott & Gen. for trademark infringement. The Commercial Court of the Canton of Berne declared the mark GLAS-SHOT null and void and prohibited the Cataphote Corporation from using this mark in Switzerland.
The Cataphote Corporation appealed this decision, arguing that its mark did not infringe the rights of Jenaer Glaswerk Schott & Gen. and that the products it marketed were of a totally different nature from those of Jenaer Glaswerk Schott & Gen.
Considerations
The Federal Tribunal examined the issue of the burden of proof of the use of the incriminated mark. It considered that the issue of the burden of proof was irrelevant, insofar as the judge had clarified the circumstances of the case. The Federal Tribunal also examined the issue of the similarity between the marks and considered that the products or goods bearing similar marks were not of a totally different nature.
The Federal Tribunal also examined the issue of the prohibition to do in relation to the repression of non-compliance with a decision of the authority according to cantonal…