“OTTO v. OTTO’s”

• 1. For a finding of use priority the only relevant factor is how long the sign has been in usage.

• 2. Article 5 of the Convention of 1892 must be narrowly interpreted in the sense that the use of a trade mark in one contracting state only defers the grace period for use in the other contracting state – in Switzerland, five years according to Art. 12 of the Trade Mark Act.

• 3. Risk of confusion must be decided in an overall assessment of all circumstances that actually play a role in distinguishing the individualisation of the designated products in the view of the reasonably observant consumer.

• 4. In contrast to company law or trade mark law, in which only the respective signs or entries in the register are decisive, in unfair competition law, to determine risk of confusion the overall circumstances must be taken into consideration, that is, not only the registered sign, but its actual use as well as further elements external to the respective sign.

• 5. If a conduct generates a risk of confusion, and if in the context of a weighing of interests the interests of the respondent weigh more than those of the appellants, the conduct is unfair within the meaning of Art. 3(1) lit. d of the Act against Unfair Competition. There is no need for a special subjective ground for claiming an infringement.

• 6. If a risk of confusion is found, the respective interests of the parties must be weighed. The weighing of interests is particularly important where the rights of those bearing the same name are concerned.

• 7. Even if in principle in the relationship between parties with the same name the respective priority rules applied, the name rights of the party with more recent priority must be considered in the necessary weighing of interests. This can result in a compromise such that the sign with younger priority has to have a further element added to it. Only where this is not possible is the party with younger priority prohibited from using its name as a characteristic component of the sign.

• 8. As a rule, it is presumed that the continued existence of a sign (that is in use) with older priority that has gained acceptance as a trade mark through use due to its being well-known justifies the imposition of restrictions on the younger competitor with respect to the use of its signs in order to avoid confusion.

• 9. What is decisive with respect to the weighing of interests is the circumstances at the time when the action was brought. Acquired distinctiveness, and with it, the degree of familiarity of a sign, is a relevant aspect.

• 10. Pursuant to Art. 14 of the Trade Mark Act, the registered trade mark does not prevail over those who have used a certain sign before filing an application for its registration but have foregone registration. However, when the trade mark proprietor has use priority over the party entitled to continued use, the proprietor can prohibit the continued use according to the principles of unfair competition law.