1892 Convention between Switzerland and Germany concerning mutual patent, design and trademark protection terminated – so what?

Preface 

The Convention between Switzerland and Germany concerning collective patent, design and trademark protection of 13 April 1892 was one of the oldest transnational bilateral conventions that still played a part in the practice of the two constricting countries and was constantly appertained to in case law and legal jotting. 

 According to well- established rules in Switzerland and in Germany 

 trademark rights can no longer be asserted if a trademark has not been used for five successive times before the assertion, unless five times haven't yet passed since the expiry of the deadline for opposition or completion of an opposition procedure;( 1) and 

 anyone may file a request with the trademark office of Switzerland or Germany, independently, for cancellation of the trademark on the grounds ofnon-use after five times from the unused expiry of the opposition period or the conclusion of opposition proceedings( 2) or seek a analogous expedient from the courts.( 3) 

Termination of 1892 Convention in way 
 
 The Convention first took a hit with the European Court of Justice( ECJ) decision of 12 December 2013,( 5) in which the Swiss patron of the drink Passaia wanted to save its trademark rights in Germany by stating that it had been used in Switzerland, counting on the 1892 Convention. The ECJ held that when dealing with EU trademarks, only EU law is applicable, and that there's no room for transnational conventions binding only one EU member state. thus, the use of the PASSAIA trademark in Switzerland wasn't sufficient to save trademark rights in Germany. Notwithstanding that ECJ decision, the Swiss courts continued to consider the use of a trademark in Germany as sufficient to save trademark rights in Switzerland. 
 
 latterly, the ECJ in its decision of 22 October 2020( 6) held that the 1892 Convention is also inharmonious with EU law when dealing with public trademarks.( 7) nevertheless, it's still binding on Germany and applicable until its incompatibility with EU law is resolved. According to composition 351( 2) of the Treaty on the Functioning of the European Union, the state party to any agreement which isn't compatible with EU covenants must exclude the incompatibilities. In this case, this meant that Germany was obliged to terminate the 1892 Convention in order to resolve the incompatibly. 
 
 Accordingly, Germany terminated the 1892 Convention with a note dated 20 April 2021, which Switzerland accepted without important ado. The termination came fairly effective as of 31 May 2022 and the Convention expired on that date. According to the Swiss Federal Institute of Intellectual Property, the Convention remains applicable to expostulation and cancellation procedures regardingnon-use, handed that the period for the applicable use, or rathernon-use, ended previous to 31 May 2022. 
 
 Comment 
 
 The termination of the 1892 Convention means that the use of a trademark in Germany no longer has any effect on trademark rights in Switzerland and vice versa. This means that for a trademark to be defended in Switzerland, it also has to be used in Switzerland and similar domestic use must be proven. The same applies with regard to use in Germany for a German trademark. thus, securing and conserving substantiation of genuine use of a trademark in the country where it's registered has come indeed more applicable and important.