Otto's loses the name dispute against Otto
Otto wins against Otto's: The Lucerne Cantonal Court has dismissed the Swiss discounter's lawsuit against the German Otto Group.
Otto's wanted to prevent its namesake from entering Switzerland with the domain Otto-Shop.ch. The remnant retailer, headquartered in Sursee LU, feared a loss of sales due to the likelihood of confusion. In its lawsuit, the Swiss discounter had essentially demanded that the German Otto Group be prohibited from operating as a retail or mail-order company in Switzerland under the Otto and Otto-Versand trademarks. It also wanted to prohibit it from using a corresponding domain name with ".ch".
The cantonal court came to the conclusion that there is currently no danger of the defendant entering the stationary retail market, as it wrote in the ruling, which it published on Thursday. Therefore, there is no legal interest in a ban in this regard. In this respect, it did not uphold the action.
With regard to online trading in Switzerland, the court dismissed the action. According to the court, the plaintiff was not able to prove the position worthy of protection on the use of his trademark, as claimed by him, in a legally sufficient manner.
State treaty in force
The Cantonal Court ruled that the defendants could rely on an international treaty between Germany and Switzerland of 1892 for the active use of their trademark, which they had registered before that of the plaintiff. This was still in force. Therefore, the judges granted the defendants priority of use of their trademark in Switzerland.
The court annulled the precautionary measures ordered in the decision of August 14, 2017, which prohibited the German Otto Group from commencing activities as a mail order company in Switzerland under the trademarks Otto and Otto-Versand.
Otto's wants to go to federal court
The Swiss discounter has to bear all the legal costs of the main proceedings and those of the proceedings for measures. These amount to a total of 45,000 Swiss francs. In addition, it must pay the defendant a lawyer's fee of 49,000 Swiss francs for the main proceedings and 19,700 Swiss francs for the summary proceedings. The judgment can be appealed to the Federal Supreme Court within 30 days. It is not yet legally binding.
As Otto's CEO Mark Ineichen said in response to an inquiry from the Keystone-SDA agency, he intends to appeal the ruling to the Federal Supreme Court.
Otto is not Otto
Until now, two disparate coexisted: the Otto Group, founded in Hamburg in 1949 - today the world's second-largest online retailer after Amazon - expanded into Switzerland long before Otto's damage post was founded in 1978.
Today, the Swiss discounter operates 100 stores as a retailer with around 2000 employees. Since 2007, it has also had a web store, which so far only accounts for 1 to 2 percent of total sales. Group sales amounted to around 649 million Swiss francs in 2015.
"The Otto trademarks in Switzerland are untouchable, which of course poses a problem for Otto's," the representative of the German company had said at the main hearing in court at the end of October. The representative of the Swiss Otto's was of the opinion that the likelihood of confusion was obvious. He concluded by saying, "Otto's owns Switzerland, Otto owns the rest of the world." (SDA)
On the subject:
Legal dispute over use of name in Switzerland: Otto's and Otto fail to reach agreement
Trademark dispute: Otto's defends itself against the German Otto Group
