Trademark dispute: Otto's defends itself against the German Otto Group
Otto’s, the discount retailer founded by the late Otto Ineichen, is fighting back against the German Otto Group’s entry into the Swiss online market—and has been successful so far.
As the SonntagsZeitung writes in its current issue, the companies are engaged in a legal dispute - unnoticed by the public - that has reached the Federal Court.
Otto's not only operates numerous discount stores in Switzerland, but also a web store for online orders.
Apparently, the German Otto Group - a billion-dollar, storied mail-order giant - wanted to launch the Otto-Shop.ch site through an Austrian subsidiary back in 2017.
As court documents show, the Hamburg-based group reckoned from the outset that the Swiss company Otto's would take little pleasure in its expansion plans. Attempts to set up a "peaceful coexistence" failed. The Germans, for example, rejected Otto's suggestion that the Otto Group could handle its Swiss online business via the subdomain Otto.de/ch.
Both the Cantonal Court of Lucerne and later the Federal Court subsequently ruled that the Otto Group was not allowed to appear in Switzerland via domain as Otto or Otto-Versand. However, the main proceedings at the Federal Court are still pending, the whole thing was uncovered by the trademark expert Martin Wilming.
The Sonntagzeitung calls the decisions of the Swiss courts "surprising", because the Otto Group had its trademark protected in Switzerland about 15 years earlier than Otto's. For the court, however, the priority of use is decisive: because the Otto Group has never used the trademark since it was registered in 1979, it has no right to protection. This is in contrast to Otto's: The company has built up a "market position worthy of protection" since registration in 1994.
The German Otto Group, on the other hand, relies on a state treaty dating back to imperial times. According to this, the use of the trademark in Germany would be sufficient to assert protection in Switzerland as well. However, as mentioned above, the final assessment by the Federal Court is still pending. While Otto's did not want to comment to the SonntagsZeitung, the Otto Group describes the outcome of the proceedings as "completely open". (hae)
