Termination of the German-Swiss Agreement of 1892 – What trademark owners should pay attention to

With effect from May 31, 2022, Germany has terminated the “Agreement between Switzerland and Germany on Reciprocal Protection of Patents, Designs and Trademarks” of 1892.
This bilateral agreement, in force for over 100 years, made it easier for owners of intellectual property rights to exploit their rights in the other contracting state. A key provision concerned the use of trademarks to maintain their legal standing: actions in Switzerland were recognized for German trademarks, and vice versa. This option, which was often helpful, is now no longer available. Depending on the current usage situation, it may therefore be advisable to re-register trademarks – as long as this is legally possible.

Otherwise, the familiar rules apply: Anyone wishing to enjoy trademark protection in Germany and Switzerland must in future submit trademark applications separately in both countries or, alternatively, protect a national trademark through an international registration.

The abolition of the German-Swiss Agreement has far-reaching consequences in trademark law, particularly for trademark owners.
A key advantage of the agreement was that the legally valid use of a trademark was also recognized in the other country. This made it easier, in particular, to protect the trademark against cancellation applications due to lack of use.

Following the termination of the agreement, trademark owners must now ensure that their trademark is actually used in Germany and Switzerland to maintain protection. Acts of use in the other country are no longer automatically considered to be valid. This means that a trademark that has only been used in one of the two countries can no longer automatically be defended against cancellation applications in both states.

I can provide comprehensive advice on the consequences of the abolition of the German-Swiss agreement and support you in effectively protecting your trademark rights in both countries. Contact me to continue to reliably protect your brand.

The abolition of the German-Swiss agreement applies ex nunc, meaning only for the future. There is no retroactive cancellation.
Although some details are still unclear, everything indicates that trademark owners can continue to rely on acts of use in the territory of the other country over the last five years – but only for actions until 31 May 2022.

From the May 31, 2027 The termination of the agreement will be decisive for all trademarks. Acts of use in the other country will then no longer count within the five-year period and can therefore no longer be used to maintain the legality of a trademark.

Trademark owners who have previously used their German or Swiss trademarks exclusively in the other country must now adapt their usage practices.
With the abolition of the German-Swiss agreement, acts of use in the other country can no longer be used to maintain rights.

It is advisable to carefully review your trademark portfolio and, where appropriate, consider filing new applications for the trademarks in question – to the extent permitted by the rules on repeated applications.
This will ensure long-term trademark protection in both countries and minimize potential risks associated with the new regulations.

Optimize your brand strategy with my expert support! As a trademark attorney, I will support you in efficiently implementing your trademark application in Switzerland and adapting your trademark portfolio in a timely manner to ensure protection in both Switzerland and Germany.

Contact me to professionally secure your trademark rights and to optimally design your brand strategy.