Trademark Opposition Proceedings in Switzerland: An Empirical Study of Legal Reasoning

This study is the first empirical analysis of legal reasoning in trademark opposition proceedings in Switzerland. We examine a novel dataset on trademark opposition proceedings brought before the Swiss Federal Institute of Intellectual Property (IPI). In these proceedings, the likelihood of confusion between two (or more) trademarks is assessed based on the similarity of the trademark signs and the similarity of the goods and services, taking into account a series of additional aspects such as the distinctive character of the opposing trademark and the level of attention of the average consumer when buying the goods and services for which the earlier trademark is registered. Our dataset contains information on 2,453 cases relating to proceedings between June 2002 and August 2018. In particular, we examine which substantive factors drive the outcome of these decisions. Some of our findings call into question the established legal doctrine. For example, our data suggest that the importance of the beginning of words for establishing similarity between word marks is overrated by legal doctrine. Furthermore, our data show no clear influence of the level of attention on the assessment of the likelihood of confusion. Instead, we found striking differences between the success rates of different types of trademarks. In fact, the data reveal a sliding scale with word marks being the most successful trademarks followed by figurative trademarks that contain a word element, and purely figurative trademarks. Based on our empirical findings, we make suggestions on how to improve the legal reasoning when assessing the likelihood of confusion.