Switzerland: Arthursgroup vs Swiss Arthur Prod – The Battle For Arthur

Last Updated: 13 April 2015
Article by Frédéric Serra Esq and Sevan Antreasyan

In a recent decision, the Federal Supreme Court decided a case opposing Arthursgroup SA ("Arthur I") on the one hand and Swiss Arthur Prod SA ("Arthur II") on the other hand.

Arthur I – once operating a night club, now a restaurant/ bar/lounge – is the owner of the "ARTHUR'S" trademark, which has been registered since 1996 in classes 25, 35, 38, 41 and 42 (now 43). Arthur II – an entertainment company organizing and producing events and shows – registered the "Les Théâtrales de Swiss Arthur Prod" trademark in 2008 in class 41.

After battling over the course of a couple of years (sending cease and desist letters) without any results, Arthur I decided to bring the fight over the Arthur's name to the Swiss courts. Claiming to be the rightful owner of the Arthur's name, Arthur I requested the court inter alia to cancel Arthur II's trademark and to order Arthur II to change its trade name (by removing the word "ARTHUR"). On the grounds of article 951 para. 2 of the Swiss Code of Obligations, which requires a registered trade name in the Commercial Register to have sufficient distinctiveness from an earlier registered trade name, Arthur I won a "small" battle: Arthur II was requested to modify its trade name but left free to decide on the appropriate changes to adopt. A trademark violation was however denied. This case is interesting in particular as regards (i) the genuine use of a trademark requirement, (ii) the similarity between services of classes 41 and 43, and (iii) the lapsing issue relative to the protection of trade names.

(i) Since both trademarks are registered in class 41 for similar services (organization of events), the Court first analyzed whether Arthur I's use of its trademark in relation to these services was genuine.

According to articles 11 and 12 of the Swiss Trademark Act, a trademark shall be used in relation to the goods or services for which it was registered in the five years following registration, failing which the trademark rights are lost for such non used goods or services. The Court recalled that a genuine use must be serious in relation to each of the products or services for which the trademark has been registered, and in a way that the targeted audience recognizes such use of a trademark as a distinctive sign.

In this case, Arthur I had not genuinely used the trademark. On the one hand, hosting sporadic events organized by third parties (in a restaurant/bar/lounge) within the Arthur I premises was not considered as a use by Arthur I of its trademark. On the other hand, organizing three events over a four year timespan was not considered serious. Consequently, the Court concluded that Arthur I could not claim protection for its trademark for the services in class 41.

(ii) The Court then went on to examine the similarity of the services registered in class 41 for the Arthur II trademark (i.e. entertainment services, cultural activities, and shows and events production and organization) as compared to services of class 43 claimed (and genuinely used) by Arthur I (i.e. operation of a bar/restaurant) and considered that these services are not similar and, thus, that there was no likelihood of confusion between the signs. The rationale was that the purpose of these different services and the type of company actually offering such services are different. In addition, the Court found that the targeted audience of such services very well knows the difference between these services.

(iii) The third interesting point of this decision pertains to the lapsing of the right to claim a trade name infringement. In Swiss law, a right shall not be protected if it is exercised in an abusive manner (Article 2 para. 2 of the Civil Code). In the context of intellectual property rights, unfair competition and registered trade names, this principle has the consequence of preventing a party from claiming infringement if it tolerated an infringing use for too long. Such an assessment must be made on a case-by-case basis and courts will take into account whether or not the infringer can reasonably and in good faith believe that the rights holder has accepted the infringement and will no longer take action before the court. In this regard, it is relevant to determine if the litigious sign is known to the public further to a long and uncontested use.

In the case at hand, Arthur I waited 17 months after the publication of Arthur II's trade name in the Commercial Register to send its first cease and desist letter. Contrary to the Cantonal Court, the Supreme Court held that this was not too long. Following this first cease and desist letter, Arthur I sent three more letters over the course of 18 months before starting legal proceedings against Arthur II. Each of the cease and desist letters was found to be a new starting point for the assessment of the lapsing of rights. Although an infinite reiteration of cease and desist letters without starting legal proceedings would likely not be compatible with article 2 para. 2 of the Swiss Civil Code, the Court found that Arthur II could not in good faith have believed that Arthur I had waived all rights to act in court and, hence, that Arthur I's rights had not lapsed.

In conclusion, Arthur I won one battle, but did not come close to winning the war: the Supreme Court ordered Arthur II to modify its trade name in the Commercial Register, but – since the addition of distinctive elements to the word "ARTHUR" could already be enough to distinguish Arthur II's trade name from that of Arthur I – it did not specifically order it to remove the word "ARTHUR". The Court even suggested that "King Arthur" may not create a likelihood of confusion with Arthur I's brand. Arthur II seemed more than pleased with that suggestion as it has now changed its trade name from "Swiss Arthur Prod SA" to "LES PRODUCTIONS DU ROI ARTHUR SA".

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions