Trademark law: Declaratory action for non-infringement where use of the sign 'Von Roll' with additions is permitted by contract; legal interest in declaration affirmed, appeal dismissed

Facts

Parties and procedural history: Von Roll Holding AG (defendant, appellant) and vonRoll infratec (investment) ag (plaintiff, respondent), both companies of the Von Roll Group, dispute the use of the sign component 'Von Roll'. The prior instance was the Obergericht of the Canton of Solothurn, Civil Chamber, which by judgment of 4 February 2020 (ZKEIV.2019.1) granted the claims.

Contractual basis: By purchase agreement of 9 April 2003, Von Roll Holding AG sold the shares of today's vonRoll infratec (holding) ag together with its holdings. Art. 14 provided that the Infratec Group remains entitled to use the company component 'Von Roll' with an individualising addition and to use 'Von Roll' in connection with products. Von Roll Holding AG agreed that VON ROLL INFRATEC, VON ROLL HYDROTEC and VON ROLL CASTING be protected as word and/or figurative marks. In the court settlement of 7 September 2006 (Amtsgericht Thal-Gäu), which 'confirms, specifies and supplements' the purchase agreement, the Infratec Group was granted the right to use and have protected 'vonRoll' exclusively with the additions 'infratec', 'hydro', 'casting' and 'itec' as company name and/or trademark; in addition, additions such as 'hy', 'rohr', 'pipes', 'tubi', 'valves' etc. were permitted. Non-conforming marks were to be deleted.

Trademark position: Von Roll Holding AG is the owner of the word marks 'VON ROLL' (No. 539404 and 305935) and 'VON ROLL ENERGY' (No. 622580). vonRoll infratec (investment) ag filed several word/figurative marks on 20 October 2017 (including No. 716228 VONROLL CASTING, No. 718039 VONROLL HYDRO, No. 718040 VONROLL ITEC, No. 718512 and 718513 VONROLL INFRATEC), some with the so-called manhole-cover logo. Von Roll Holding AG lodged seven oppositions with the IGE; the opposition proceedings were stayed indefinitely.

Claims: The plaintiff sought a judicial declaration that its marks do not infringe the defendant's word marks and do not stand in the way of their registration (seven declaratory claims). The defendant requested dismissal of the action, alternatively remittal; the prior instance granted the action.

Appellant's submissions: Violation of the right to be heard (Art. 29 para. 2 Cst., Art. 53 CPC), prohibition of arbitrariness (Art. 9 Cst.), lack of legal interest in a declaration (Art. 59 para. 2 lit. a, Art. 88 CPC, Art. 52 TmPA), violation of Art. 14 TmPA, erroneous interpretation of the contract (Art. 18 para. 1 CO, Art. 2 para. 1 CC) and violation of Art. 3 TmPA through disregard of priority rights.

Considerations

Admissibility and scope of review: The Federal Supreme Court examines the admissibility of the appeal in civil matters against a superior cantonal decision as sole instance (Art. 72, 75 para. 2 lit. a, 74 para. 2 lit. b FSCA) as given. It applies the law of its own motion (Art. 106 para. 1 FSCA), but is bound by the strict principle of complaints; complaints of fundamental rights and arbitrariness must be precisely substantiated (Art. 106 para. 2 FSCA). The facts are binding unless manifestly incorrect (Art. 105 para. 1, 97 para. 1 FSCA). Divergent presentations of the facts in the appeal remain disregarded.

Complaints of violation of the right to be heard and arbitrariness: The complaint of a violation of the right to be heard on account of insufficient density of reasoning, allegedly ignored submissions and absence of an evidentiary order (Art. 154 CPC) fails, as the authority is not required to refute every party position and the reasoning is comprehensible. The complaints concerning the manhole-cover logo and the assessment of evidence also prove unfounded: the appellant shows no arbitrariness but merely presents its own view of the evidence.

Legal interest in a declaration (Art. 88 CPC, Art. 52 TmPA, Art. 59 para. 2 lit. a CPC): A declaratory action requires a substantial interest worthy of protection, which may also be of a factual nature where legal relations are uncertain and the uncertainty can no longer reasonably be tolerated. A declaratory action is subsidiary to actions for performance or for modification. The opposition proceedings before the IGE examine the conflict of signs only on the basis of the register; contractual claims must be asserted in civil proceedings. The plaintiff's contractual entitlement excludes trademark-law defensive claims of the licensor, unless the licensee exceeds the contractual scope. An action for performance seeking withdrawal of the oppositions or for damages would not remove the uncertainty. The legal interest in a declaration is therefore affirmed.

Contract interpretation and right of continued use: The complaint of a…