Facts
Parties and subject matter of the proceedings: Tellco Holding AG (plaintiff, appellant), based in Schwyz, represented by attorney Patrick Degen (Fürsprecher), sued Tell AG (defendant 1, respondent 1, seat in Geneva) and Tell Advisors AG (defendant 2, respondent 2, seat in Geneva), both represented by attorney-at-law Stefan Kohler. The subject matter concerns trademark law, company law, protection of names and unfair competition.
Background: The plaintiff is the holder of the marks TELLCO (CH No. 598282, filed 10 March 2010), a word and figurative mark TELLCO (CH No. 604971, filed 15 June 2010) and TELLCO PENSINVEST (CH No. 626690, filed 21 November 2011) for services in classes 35 and 36, including, among others, management for pension funds, financial services, real estate services and financial advisory services. Its subsidiary Tellco AG manages several foundations (Tellco B., C., D., E., F.), all of which use 'Tellco' in their names. Defendant 1 is the holder of the word mark TELL (CH No. 693264, filed 20 May 2016) for financial services, asset management, investment banking and advice on financial matters (class 36). Defendant 1 has traded as Tell AG since 21 October 2016, and defendant 2 has traded as Tell Advisors AG since 20 April 2016 (originally Tell Asset Management AG).
Requests before the Commercial Court: (1) Prohibition of and change of company name concerning the use of the sign 'Tell' as a component of a company name, alternatively an obligation to clearly distinguish it from the company names of the corporate group; (2) prohibition of the use of the sign 'TELL' (among others as 'TELL GROUP') for financial and advisory services; (3) a declaration of invalidity of the mark CH No. 693264 'Tell' and notification to the Swiss Federal Institute of Intellectual Property pursuant to Art. 54 TmPA.
Lower court: The Commercial Court of the Canton of Zurich conducted a double exchange of written submissions and dispensed with the main hearing initially scheduled. By order and judgment of 26 November 2020 (HG190039-O), it declined to hear the action insofar as claims of Tellco AG and the foundations under company, name and unfair competition law were asserted (voluntary procedural standing inadmissible). It dismissed the action in all other respects.
Proceedings before the Federal Supreme Court: By civil appeal, the plaintiff complained that the Commercial Court had dispensed with the closing arguments without her consent, which violated Art. 232 CPC and Art. 29 para. 2 Cst. She requested annulment and, on the merits, the upholding of her prior requests, alternatively remittal. The Commercial Court waived its response; the respondents requested dismissal.
Course of the main hearing: After the close of the second exchange of written submissions (reply 16 March 2020, rejoinder 5 June 2020), the Deputy President asked on 15 October 2020 whether the parties would waive the oral main hearing. On 23 October 2020, the plaintiff declared a waiver on condition of written party submissions; on 4 November 2020, a public hearing was scheduled, and the time limit for initial submissions (20 minutes) and the restriction on new facts under Art. 229 CPC were communicated. By letter of 9 November 2020, the plaintiff waived the main hearing unconditionally, since no closing arguments would be permitted. The defendants had not made any submissions. The Commercial Court dispensed with the hearing and ruled on 26 November 2020.
Considerations
1. Admissibility The contested judgment concerns a civil dispute within the meaning of Art. 5 para. 1 lit. a, c and d CPC. It is a final decision (Art. 90 FSCA) of a single cantonal instance pursuant to Art. 75 para. 2 lit. a FSCA. The civil appeal is available regardless of the amount in dispute under Art. 74 para. 2 lit. b FSCA.
2. Principle of complaints and requirements of reasoning Pursuant to Art. 95 and 96 FSCA and Art. 42 para. 2 FSCA, the appeal must set out the violation of law in concise form; the appeal may not be limited to repeating legal positions but must engage with the reasoning of the lower court (BGE 140 III 115 consid. 2).
3. Waiver of the main hearing and closing arguments (Art. 232, 233 CPC) The plaintiff's right to be heard was not violated by the decision of the Commercial Court. First, the file does not show that closing arguments were expressly excluded; the Deputy President reserved the taking of evidence and did not speak of a waiver of closing arguments. Second, according to the settled case law of the Federal Supreme Court (inter alia BGE 146 III 194 consid. 3.2; judgments 4A_308/2020, 4A_301/2016 / 4A_311/2016, not published in BGE 143 III 79), where no evidence is taken at the main hearing stage, the opportunity for closing arguments is not mandatory, since the first party submissions and the closing arguments coincide; a divergent doctrinal opinion (Willisegger, Heinzmann/Pasquier) is rejected because it would lead to procedural idle steps and would conflict with the principle of expedition under Art. 124 para. 1 sentence 2 CPC. Third, the plaintiff did not argue that evidence should have been taken; new assertions in the rejoinder could be answered within the unconditional right of reply. Fourth, by letter of 9 November 2020, the plaintiff unconditionally waived all partial phases of the main hearing; the defendants implicitly declared a waiver as well, so the Commercial Court was entitled to refrain from holding the hearing (Art. 233 CPC). The complaint is unfounded.
4. Trademark law (Art. 3 para. 1 lit. c, Art. 13, Art. 52, Art. 55 TmPA) The sign 'TELL' is a national word sign within the meaning of Art. 7 CAPA; it may in principle be used (Art. 11 CAPA), although there is a significant public interest in ensuring that national word signs are not monopolised excessively. Anyone who incorporates such a sign into their mark or company name must accept a low distinctive character. The plaintiff has the earlier priority (Art. 3 para. 1 lit. c in conjunction with para. 2 and Art. 5 et seq. TmPA). Similarity of the services exists, as financial services are in part identical and the services overlap thematically (management of pension funds versus investment management and asset management). The likelihood of confusion is assessed on the overall impression; in infringement proceedings the mark is compared with actual use, and in invalidity proceedings the register entries are compared. As regards similarity of the signs, the written form differs considerably: the final syllable 'CO' turns the monosyllabic short word 'TELL' into a disyllabic sign; for short words, even a slight modification can create a significant distance. The meaning of 'TELL' is ambivalent (the national hero Wilhelm Tell or the English verb 'to tell'). Distinctive character is weak, as 'TELL' is a term of general language use, numerous marks containing this element are registered, and the plaintiff did not prove any particular recognition through advertising. Customers in financial services are particularly attentive, which further reduces the likelihood of confusion. The presentation forms 'TELL GROUP' and the figurative mark with the Tell bust create additional distance. A likelihood of confusion within the meaning of Art. 3 para. 1 lit. c TmPA was therefore rightly denied; the trademark claims (prohibition, removal, declaration of invalidity) fail.
5. Company law (Art. 951, Art. 956 para. 2 CO) A company name must clearly distinguish itself from all company names already registered. For commercial companies, strict requirements apply to distinctiveness owing to the free choice of company name, particularly in cases of competition or geographical proximity (BGE 131 III 572). Under company law, the perspective…