02 April 2025

A Dispute Over the Rothschild Brand

  • Articles
  • Legal
  • Data / Technology / IP

In a dispute over the use of the ‘Edmond de Rothschild’ trademark, Switzerland’s Federal Supreme Court says that sponsoring cultural events as a bank isn’t enough to maintain exclusive brand rights.

  • Luca Hitz

    Legal Partner

  • Philipp Stadler

    Senior Legal Associate

The Rothschild Group consists of various holding companies. Edmond de Rothschild AG (hereinafter ‘the bank’) is responsible for the financial sector, while Holding Benjamin et Edmond de Rothschild (hereinafter ‘the complainant’) is responsible for all other business activities. The complainant is the owner of the ‘Edmond de Rothschild’ trademark, which is registered, inter alia, for services under Nice Classification 41. This includes, in particular, education, sporting and cultural activities.

After the death of Edmond de Rothschild, his wife, Nadine de Rothschild, set up the Fondation Edmond et Nadine de Rothschild (hereinafter ‘the respondent’) to preserve and manage the assets of her late husband. The complainant expressed concerns that the foundation's use of the name ‘Edmond’ could cause confusion and jeopardise the reputation of its trademark. The complainant and the bank then applied for interim measures to protect the complainant's ‘Edmond de Rothschild’ trademark. After this application was rejected and a trademark infringement suit was subsequently filed, the Federal Supreme Court has now dismissed the appeal. In doing so, it relied in particular on the use and classification of the trademark.

No Proof of Use Provided

From the date of registration, trademark protection applies to the entire territory of Switzerland. This gives the owner the exclusive right to use the registered trademark to distinguish the corresponding goods or services. Thus, it can prohibit third parties from using similar signs to identify identical or similar goods or services.

To maintain the trademark right, the owner must actually use the trademark. However, the owner is not required to act immediately, as the law grants a grace period of five years for non-use. This period begins anew if use of the trademark is interrupted. This gives the owner the opportunity to gradually introduce the brand to the market or to adapt it to economic circumstances. If the owner of a protected trademark refrains from using the trademark in connection with the registered goods or services for an uninterrupted period of five years, he can no longer assert his trademark rights, unless there is a legitimate reason for the non-use.

The use of the trademark must be in Switzerland and must fulfil its function, i.e. the use must be public (use as a trademark). A purely symbolic use, which serves only to avoid the loss of the trademark right, is not sufficient. The proprietor must have the genuine intention of satisfying demand for the goods or services. In addition, the use must be economically reasonable and in the course of trade. Use for private purposes or within the company is not sufficient to maintain the claim. Customary commercial practice is the deciding factor.

Brand Utilisation or Sponsoring? The Limits of Brand Protection in the Rothschild Case

In the case of the Rothschild family, the lower court had already found that the trademark was not used by the holding company Benjamin et Edmond de Rothschild itself, but by the bank. However, the owner of the trademark, i.e. the complainant, had consented to this, so that the bank's use was equivalent to the complainant's use.

The bank organised various sporting and cultural events, including an exclusive invitation-only sailing session, the awarding of the ‘Prix Edmond de Rothschild’ at an equestrian tournament and an invitation to a musical performance at the ‘Gstaad Menuhin Festival & Academy’ for its customers. In addition, the trademark was displayed in the programme for the equestrian tournament.

However, according to the Federal Supreme Court, the use of the trademark in the context of these events is perceived by the bank's current and potential customers as being associated with the bank itself, but not as a sign to distinguish it from other cultural and sporting services. The events are also not public services but are only accessible by invitation and offered free of charge. Furthermore, the use of the sign in question in connection with the bank's events or in the context of sponsoring activities is not intended to identify and distinguish certain services in Class 41 from those of third parties, but to promote the bank's activities in the financial sector. Consequently, the complainant cannot invoke trademark protection to prohibit the respondent from using the name to offer cultural and educational services.

Click here to learn more about our expertise:

 
Back