Facts
Parties and proceedings: The respondent, a cooperative ([A.] Group), operates retail trade through subsidiaries. It is the owner of the Swiss word-and-device mark No. 2P-434099 (Class 11, 'Lighting fixtures and apparatus', registered 1996) and operates specialist stores for light fittings under 'Lumimart' as well as a webshop at 'www.lumimart.ch'. Since September 2018 it has used a new logo.
The appellant, a German GmbH with its seat in Lauchringen (founded 2012), trades in lighting fixtures and light bulbs. It is the owner of the Swiss word mark No. 654460 'Luminarte' (registered 7 February 2014, Classes 9 and 11) and operates the domains 'www.luminarte.de' and 'www.luminarte.ch' (redirecting to the German domain), as well as the company 'Luminarte GmbH'.
Procedural history: Following warnings of 3 October and 9 November 2016, the respondent filed an action on 30 March 2017 with the Commercial Court of the Canton of Aargau. It requested a prohibition on the use of the company name, domains, the sign 'Luminarte' and the logo in Switzerland (Art. 55 para. 1 TmPA, Art. 13 para. 2 TmPA), a declaration of invalidity of mark No. 654460 (Art. 52 CPC), and payment of CHF 3'965.00 plus interest. By judgment of 31 March 2020, the Commercial Court granted the injunction (with a disciplinary fine) and declared mark No. 654460 invalid except for 'Dimmer (light regulators)' and 'electronic control devices for lighting'; the payment claim was dismissed to the extent of CHF 3'965.00.
Requests before the Federal Supreme Court: The appellant requested that the judgment be set aside and the action dismissed, or alternatively that the matter be remitted. The respondent requested dismissal of the appeal. The Commercial Court waived a response. By presidential orders of 4 and 19 June 2020, suspensive effect was granted to the appeal.
Legal issue: Whether injunction and invalidity claims under trademark law exist, in particular whether there is a likelihood of confusion under Art. 3 para. 1 lit. c TmPA, whether there is a legal interest in protection, whether the mark is protected despite non-use, and whether the claims are forfeited.
Considerations
Admissibility and binding effect of the facts: The Federal Supreme Court is bound by the findings of fact of the lower court (Art. 105 para. 1 FSCA). A civil law appeal does not serve to re-litigate the cantonal proceedings. Complaints based on facts deviating from those found by the Commercial Court, as well as general criticism of a violation of the principle of party presentation (Art. 55 para. 1 CPC) or of the principle of equality before the law (Art. 8 para. 1 Cst.), are inadmissible. Anticipatory assessment of evidence is reviewable only for arbitrariness; there is no violation of the right to be heard merely because the legal view is not shared.
Territoriality and specificity of the injunction request: Claims arising from intellectual property rights are territorially limited. An infringement requires a spatial connection to Switzerland; therefore only acts with a connection to Switzerland may be prohibited. The mere technical accessibility of an internet offer is not sufficient; a qualified connection is required (delivery to Switzerland, price indication in CHF). Geoblocking is technically reasonable, so the prohibition is not unenforceable.
Legal interest and use of the mark: An injunction claim requires an imminent infringement (risk of repetition or of first infringement). A risk of repetition existed due to the current use of 'Luminarte' as a business designation, in domains and in the distribution of third-party brands. For the respondent's own goods, there is a risk of first infringement, since the trademark application is a strong indication of future use. The non-use of the logo since 2018 materially concerns the question of trademark protection: Art. 12 para. 1 TmPA grants a five-year grace period for use. The grace period lapses only for defensively filed marks registered in bad faith; here the mark has been used continuously for over 20 years and continues to fulfil its origin function, so there is no abuse. The question of use under Art. 11 para. 2 TmPA did not need to be examined.
Relative ground for refusal (Art. 3 para. 1 lit. c TmPA) and identity of goods: The ground for refusal requires similarity of goods, which constitutes an absolute limit. Light fittings and lighting fixtures are similar; light bulbs likewise, since they are functionally closely connected and perceived as a whole. The appellant is covered by Art. 13 para. 2 lit. e TmPA (use of a sign in business dealings, also outside the goods, e.g. as a company name, domain, advertising). The argument that it merely provides a trade service is unpersuasive, since the service consists in distributing the trademarked goods and is closely linked to them in market terms.
Likelihood of confusion: The likelihood of confusion is assessed on the overall impression; the closer the goods, the greater the risk and the more the younger sign must stand out. The scope of protection depends on distinctiveness. The mark 'Lumimart' is descriptive in itself, but through long-standing use since 1998, wide dissemination and intensive advertising it acquired enhanced distinctiveness; the market survey was not assessed as evidence in the impermissible sense. The signs 'Lumimart' and 'Luminarte' are very similar in appearance and sound (same initial part, nearly identical vowel-consonant sequence, similarity of the endings 'mart' and 'narte'). The reference 'DIE LICHTMACHER' does not dispel the likelihood of confusion. Components in the public domain ('lumi', 'mart', 'arte') may not be disregarded in the overall impression. The…