1 RELEVANT AUTHORITIES AND LEGISLATION
1.1 What is the relevant trade mark authority in your jurisdiction?
The Swiss Federal Institute of Intellectual Property (IPI) is the trade mark office in Switzerland.
1.2 What is the relevant trade mark legislation in your jurisdiction?
The relevant trade mark legislation in Switzerland is as follows:
- The Federal Act on the Protection of Trade Marks and Indications of Source (Trade Mark Protection Act, TmPA).
- The Federal Ordinance on the Protection of Trade Marks and Indications of Source (Trade Mark Protection Act, TmPO).
2 APPLICATION FOR A TRADE MARK
2.1 What can be registered as a trade mark?
Basically, every graphic representation can be registered as a trade mark, for example words, letters, a combination of letters, numerals, graphic images (logos), three-dimensional forms (e.g. Mercedes-Star), slogans (e.g. "Nespresso, what else"), colours or any combination of the aforementioned elements. Moreover, other distinguishing signs such as position marks, musical jingles, moving images or holograms can be registered as trade marks. Since 2017, registered designations of origin and geographical indications may be registered as geographical marks ("Valais raclette" for cheese, as a theoretical example).
2.2 What cannot be registered as a trade mark?
Signs that fall under the absolute grounds for refusal pursuant to Section 2 TmPA cannot be registered (see also question 3.1 below).
2.3 What information is needed to register a trade mark?
The applicant must provide the following information with his application to the IPI:
- an application for registration with details of the applicant's (company) name;
- a graphical representation of the trade mark;
- a list of goods and services for which protection is claimed;
- if the applicant wants to claim priority, further information must be provided (see question 2.15 below); and
- further information in case of a non-traditional trade mark (e.g. colour mark or three-dimensional mark).
2.4 What is the general procedure for trade mark registration?
After receiving the application, the IPI first of all orders the applicant to pay the registration fee. Once paid, the IPI examines the formal requirements and whether absolute grounds for refusal exist. If the IPI finds that the application satisfies the legal requirements, the trade mark is registered, officially published and the owner of the trade mark receives a registration confirmation. Otherwise, the IPI rejects the application (see also question 3.2 below).
2.5 How is a trade mark adequately represented?
A trade mark needs to be unambiguous and objective. If the applicant wants to register a non-traditional (e.g. three-dimensional) trade mark or a colour claim, this has to be noted in the application. Three-dimensional trade marks must be visualised with a drawing or photography. Colour trade marks require an indication of the colour in accordance with the Pantone classification. Moving images are represented by several still images and a description of the movement. No smell-marks are registered in Switzerland.
2.6 How are goods and services described?
Goods and services must be classified pursuant to the Nice Classification system. An applicant using class headings is considered to claim all goods and services that may be assigned to this heading.
2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?
The trade mark is registered for the territory of Switzerland (in accordance with the principle of territoriality).
2.8 Who can own a trade mark in your jurisdiction?
Any natural or legal person can own a trade mark in Switzerland.
2.9 Can a trade mark acquire distinctive character through use?
Yes. The applicant must prove the use of the trade mark in the whole of Switzerland during 10 years before filing the application. This period of use can be shorter if the applicant can instead show extensive use and significant promotional efforts. To prove the acquisition of secondary meaning, the IPI also accepts demoscopic surveys as a means of evidence.
2.10 How long on average does registration take?
Pursuant to the IPI, the registration procedure takes from six working days (for obviously unproblematic applications) up to three months after payment of the registration fee. In fact, proceedings last up to six months. An applicant may apply for an accelerated examination for an additional fee, meaning that the IPI issues a decision on the registration or objection within one month.
2.11 What is the average cost of obtaining a trade mark in your jurisdiction?
The registration fee for a trade mark (for 10 years) amounts to CHF 550 and includes three classes of goods and services. Additional fees of CHF 100 are due for each further class. An accelerated examination costs CHF 400. In addition, agents' or attorneys' fees are to be paid.
2.12 Is there more than one route to obtaining a registration in your jurisdiction?
Yes. Via the Madrid system, an international registered trade mark designating Switzerland as its territory of protection will be recognised as a Swiss trade mark.
2.13 Is a Power of Attorney needed?
As a general rule, a written Power of Attorney is not required. The IPI may, however, request one in individual cases.
2.14 If so, does a Power of Attorney require notarisation and/or legalisation?
No, it does not.
2.15 How is priority claimed?
Priority is claimed in the application or within 30 days after the filing of the trade mark application. The applicant must indicate the country of first registration and the application's filing date and, within six months, file a priority declaration. The IPI may request the filing of a priority document.
2.16 Does your jurisdiction recognise Collective or Certification marks?
Yes, Switzerland does recognise Collective and Certification marks.
3 ABSOLUTE GROUNDS FOR REFUSAL
3.1 What are the absolute grounds for refusal of registration?
Trade mark protection is excluded for (Article 2 TmPA):
- signs that are in the public domain, except for trade marks which have acquired a secondary meaning;
- shapes that constitute the nature of the goods themselves or shapes that are technically necessary;
- misleading signs; or
- signs contrary to public policy, morality or applicable law.
3.2 What are the ways to overcome an absolute grounds objection?
The applicant needs to persuade the IPI with arguments and/or evidence that the absolute grounds objection is wrong or that the trade mark has acquired secondary meaning through use (see question 2.9 above). In the case that the objection relates to the goods and services claimed by the applicant, he may decide to restrict or amend the list or to file an appropriate remark. Significant amendments may, however, result in the trade mark's application date being moved.
3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
The decision of the IPI can be appealed within 30 days.
3.4 What is the route of appeal?
The appeal of IPI's decision goes to the Federal Administrative Court and thereupon to the Swiss Federal Supreme Court. As a general rule, the latter court only examines questions of law.
4 RELATIVE GROUNDS FOR REFUSAL
4.1 What are the relative grounds for refusal of registration?
Excluded from trade mark protection are signs that create a likelihood of confusion (Article 3 para. 1 TmPA), i.e. signs that are:
- identical to an earlier trade mark and intended for the same goods or services;
- identical to an earlier trade mark and intended for similar goods or services; or
- similar to an earlier trade mark and intended for the same or similar goods or services.
4.2 Are there ways to overcome a relative grounds objection?
Relative grounds for refusal are not examined ex officio by the IPI but may be invoked by the proprietor of an earlier trade mark by filing opposition to a registration (Article 3 para. 3 and Article 31 para. 1 TmPA) or by filing a civil law suit.
4.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?
In opposition proceedings, the decision of the IPI revoking the registration of a trade mark, in whole or in part, can be appealed within 30 days.
4.4 What is the route of appeal?
The appeal is filed with the Federal Administrative Court. There is no possibility to appeal to the Swiss Federal Supreme Court.
5.1 On what grounds can a trade mark be opposed?
An opposition may be filed invoking relative grounds for refusal (see question 4.1 above).
5.2 Who can oppose the registration of a trade mark in your jurisdiction?
Opposition may be filed by the owner of an earlier trade mark (including international trade marks designating Switzerland) (Article 3 para. 3 and Article 31 para. 1 TmPA) or the owner of a trade mark that is well known in Switzerland according to Article 6bis of the Paris Convention for the Protection of Industrial Property (Paris Convention).
5.3 What is the procedure for opposition?
The opposition must be submitted in writing to the IPI within three months of the registration's publication. Moreover, the opposition fee (currently CHF 800) must be paid within this time limit. The procedure consists of one exchange of written submissions but the IPI regularly orders a second exchange. The IPI examines the likelihood of confusion on the basis of the excerpts from the trade mark register; no arguments regarding how the marks are used are heard. The defence of non-use is admissible. If the opposition is justified, the IPI revokes the registration in whole or in part. Otherwise, the opposition is rejected. Opposition proceedings take one year or even longer. The IPI publishes its decisions on its website.
6.1 What happens when a trade mark is granted registration?
The IPI publishes the trade mark on www.swissreg.ch and sends the applicant a registration certificate.
6.2 From which date following application do an applicant's trade mark rights commence?
Trade mark rights are effective as of the registration of the sign. However, an applicant may claim damages retroactively for the period between the filing of the application and the registration if the defendant obtained knowledge of the application.
6.3 What is the term of a trade mark?
A trade mark is valid for 10 years as of the date of filing the application.
6.4 How is a trade mark renewed?
A registration is renewed for further periods of 10 years if an application for renewal is filed and the fees (currently CHF 700) are paid. The application for renewal must be submitted before the ongoing term expires. Usually, the IPI informs the trade mark's owner of the expiry around six months before it expires. However, it is still possible to apply to renew the trade mark in the six months following the expiration of the term (for an additional fee of CHF 50).
7 REGISTRABLE TRANSACTIONS
7.1 Can an individual register the assignment of a trade mark?
Yes. A written request must be filed with the IPI, including in particular the assignor's consent to the assignment. The IPI provides a form, the use of which is voluntary.
7.2 Are there different types of assignment?
Yes. A trade mark may be assigned in whole or in part, i.e. only in respect of certain goods and services.
7.3 Can an individual register the licensing of a trade mark?
Yes. The licensor or the licensee must submit a written request, including in particular the licensor's consent to grant a licence. The IPI provides a form, the use of which is voluntary.
7.4 Are there different types of licence?
Yes. Specifically, there are exclusive or non-exclusive licences.
7.5 Can a trade mark licensee sue for infringement?
A person holding an exclusive licence is entitled to sue for infringement (irrespective of the registration of the licence in the register), unless this is expressly excluded in the licence agreement. Moreover, any licensee may join an infringement action in order to claim damages.
7.6 Are quality control clauses necessary in a licence?
No, they are not.
7.7 Can an individual register a security interest under a trade mark?
Yes. A written request must be submitted with the IPI. The request must either be signed by the trade mark owner or be accompanied by a copy of the relevant document containing the transaction and the trade mark owner's agreement.
7.8 Are there different types of security interest?
Article 19 TmPA expressly mentions usufruct and pledges.
8.1 What are the grounds for revocation of a trade mark?
The IPI revokes the registration in whole or in part if the opposition is either justified by, or based on, a final court decision (see section 9 below). Moreover, it cancels the registration if:
- the proprietor requests the cancellation;
- the registration is not renewed;
- the protection designation of origin or the protected geographical indication on which the geographical mark is based is cancelled; or
- a request for cancellation is approved.
Other than in the above-mentioned cases, the IPI is not competent to modify a trade mark registration on its own initiative.
8.2 What is the procedure for revocation of a trade mark?
Regarding the procedure for declaring a registration null and void, reference is made to question 9.2 below. With regard to the other cases mentioned in question 8.1, there is no specific procedure applicable.
8.3 Who can commence revocation proceedings?
The owner of the trade mark or – regarding the procedure for declaring a registration null and void – any natural or legal person (see question 9.3 below) can commence revocation proceedings.
8.4 What grounds of defence can be raised to a revocation action?
See question 9.4 below.
8.5 What is the route of appeal from a decision of revocation?
See question 9.5 below.
9.1 What are the grounds for invalidity of a trade mark?
A trade mark may be declared invalid on the following grounds:
- absolute or relative grounds for refusal;
- non-use of the trade mark in relation to the goods and services for which it is claimed for an uninterrupted period of five years following the expiry of the opposition period;
- registration in the name of agents, representatives or other authorised users without the consent of the proprietor, or trade marks which remain registered after the withdrawal of such consent; or
- guarantee or collective marks whose regulations do not comply with Article 23 TmPA or the use of which contravenes regulations.
9.2 What is the procedure for invalidation of a trade mark?
In general, a claimant must file an action for declaration of nullity before the competent civil court. The procedure follows the rules set out in the Swiss Civil Procedure Code. In case of non-use of a trade mark, the IPI is, upon request, competent to decide on the nullity of the trade mark.
9.3 Who can commence invalidation proceedings?
Any natural or legal person may file such a claim, provided it can prove a legitimate interest in the invalidation of the trade mark. In case the claimant invokes the non-use of a trade mark, the interest in keeping the register free suffices.
9.4 What grounds of defence can be raised to an invalidation action?
In case the claimant invokes absolute grounds for refusal, the trade mark owner may demonstrate that these grounds are not present and/or that the trade mark has acquired secondary meaning (see question 2.9 above).
With regard to claims based on relative grounds for refusal, the defendant may, if applicable, claim non-use of the earlier trade mark or put forward any grounds available in opposition proceedings. If the defendant can prove that the claimant knew of the attacked trade mark's existence for a significant period of time before filing his claim, the defendant may invoke bad faith (see question 10.7 below). It is also possible to argue prior use of a trade mark. In actions for declaration of nullity due to non-use of the trade mark, the owner may defend itself by demonstrating the trade mark's use.
9.5 What is the route of appeal from a decision of invalidity?
The decision of a civil court may be appealed to the Swiss Federal Supreme Court.
10 TRADE MARK ENFORCEMENT
10.1 How and before what tribunals can a trade mark be enforced against an infringer?
Trade marks are enforced by civil court actions. Claims in connection with the violation of trade marks have to be filed with a court in one of the 26 Swiss cantons.
In addition, the owner of a trade mark may file a criminal complaint against the infringer (see questions 10.8 and 10.9 below).
10.2 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?
The proceedings are initiated by filing a statement of claim. The court then usually orders the claimant to make an advance payment up to the amount of the expected court costs. Once paid, the defendant is ordered to submit its statement of defence, usually within two to three months. The court then either orders a second exchange of written submissions or calls for an instruction hearing. Then the taking of evidence takes place, followed by the final pleadings.
Depending on the extent of the parties' submissions, the complexity of the case and the court's workload, proceedings may last up to 12 months until the hearing.
10.3 Are (i) preliminary and (ii) final injunctions available and if so on what basis in each case?
Yes. The applicant may obtain preliminary injunctions if he shows prima facie that:
- the defendant violates his trade mark rights or that such violation is anticipated; and
- such violation threatens to cause harm to the applicant which is not easily reparable.
In addition, the applicant is obliged to act within a reasonable timeframe upon becoming aware of a (anticipated) violation. Otherwise, he loses his right to obtain preliminary injunctions.
In cases of special urgency, and in particular where a risk exists that the enforcement of the injunctions will be frustrated, the court may order preliminary injunctions without hearing the defendant (ex parte preliminary injunctions). The court must at the same time summon the parties to a hearing or set a deadline for the defendant to comment in writing. Having heard the opposing party, the court will decide on the request.
The court may make preliminary injunctions conditional on the payment of security by the applicant if it is anticipated that the injunctions may cause loss or damage to the defendant. Moreover, the court may refrain from ordering preliminary injunctions if the defendant provides appropriate security.
Together with ordering preliminary injunctions, the court sets a deadline within which the applicant must file his main action. In the event of default, the ordered injunctions become ineffective.
Pending the main proceedings, the competent court issues preliminary injunctions if the claimant shows that he meets the above-mentioned requirements.
10.4 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?
The Swiss procedural rules do not provide rules for pre-trial discovery. Parties (and third parties) are, however, obliged to cooperate in the taking of evidence. In particular, they have the duty to produce the physical records requested by the opposing party if ordered by the court (expect in cases where the party can claim a right to refuse).
In addition, a claimant may apply for precautionary taking of evidence if he can make a credible case that the evidence is at risk or that they have a legitimate interest. Moreover, the conditions outlined in question 10.3 above have to be met.
10.5 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?
Submissions are usually presented in writing, except where the court orders oral arguments in hearings. Physical records must be filed in writing. Witnesses are questioned by the court. There is no cross-examination but the parties may request that additional questions be put to the witness, or may, with the court's consent, ask such questions themselves.
10.6 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?
The IPI is competent to decide proceedings regarding non-use and opposition proceedings. It will stay such proceedings in case of civil court invalidity or infringement proceedings.
If the defendant raises the objection of invalidity of the trade mark in infringement proceedings, this objection is treated first.
10.7 After what period is a claim for trade mark infringement time-barred?
Claims for damages, satisfaction and handing over of profits usually become time-barred one year from the date on which the injured party became aware of the damage and of the identity of the person liable for it. The damages caused by an ongoing infringement are only known once the infringing activity has stopped. In any event, such claims become time-barred 10 years after the date on which the damage was caused. If, however, the damage claims are derived from an offence for which criminal law envisages a longer limitation period, that longer period also applies to the civil-law claims. This rule applies in particular to trade mark infringements, since they may constitute criminal offences that become time-barred after seven or 15 years.
Other claims regarding trade mark infringements (including requests for preliminary injunctions) do not become time-barred by statutory provisions, but by acting in bad faith. If the trade mark proprietor tolerates an infringement, he can no longer oppose the infringer's use of the trade mark. The infringer must demonstrate that:
- the trade mark proprietor noticed or should have noticed the infringement;
- the trade mark proprietor remained inactive for a longer period of time;
- he has acquired a valuable market position by using the trade mark; and
- he acted in good faith.
10.8 Are there criminal liabilities for trade mark infringement?
Yes. Articles 61 et seq. TmPA provide criminal provisions.
10.9 If so, who can pursue a criminal prosecution?
As a general rule, only the party injured by an infringement can initiate criminal proceedings by filing a criminal complaint. If the offender acts for commercial gain, he shall be prosecuted ex officio, provided that the public prosecutor's office becomes aware of the infringement.
10.10 What, if any, are the provisions for unauthorised threats of trade mark infringement?
Unauthorised threats may, under certain circumstances, constitute an infringement of the Act against Unfair Competition.
11 DEFENCES TO INFRINGEMENT
11.1 What grounds of defence can be raised by way of non-infringement to a claim of trade mark infringement?
The alleged infringer may invoke that his use of the trade mark bears no likelihood of confusion.
11.2 What grounds of defence can be raised in addition to non-infringement?
The defendant may invoke the defence of non-use of the trade mark (due to either its non-use, its use not being in the form registered, or its use not being for the registered goods and services). Moreover, the defendant can argue, either as a defence or as a counterclaim, the invalidity of the trade mark. Further grounds for defence are: exhaustion of the trade mark rights; tolerance of the trade mark use by the owner; or use of the trade mark by the defendant prior to the registration by the registered owner.
12.1 What remedies are available for trade mark infringement?
The claimant may request the court to:
- prohibit an imminent infringement;
- remedy an existing infringement (including seizure and destruction of infringing products);
- require the defendant to provide information on infringing items and to name the recipients as well as the extent of distribution;
- uphold actions for damages, satisfaction and handing over of profits; or
- publish the judgment at the expense of the unsuccessful party.
12.2 Are costs recoverable from the losing party and, if so, how are they determined and what proportion of the costs can usually be recovered?
In general, the costs of the winning party are charged to the losing party. Each canton determines how to calculate each party's costs; the respective regulations (including schedules) provide the court with a broad discretion. The amount in dispute, the complexity of the case as well as the number of submissions and hearings are usually taken into consideration. The party's costs fixed by the court are usually lower than the party's actual costs; only in cases with a high amount in dispute is full coverage of costs possible.
13.1 What is the right of appeal from a first instance judgment and is it only on a point of law?
The appellant may appeal the court's decision to the Swiss Federal Supreme Court. As a general rule, the latter court only examines questions of law and, only in exceptional cases, questions of fact.
13.2 In what circumstances can new evidence be added at the appeal stage?
The parties are not allowed to present new evidence before the Swiss Federal Supreme Court.
14 BORDER CONTROL MEASURES
14.1 Is there a mechanism for seizing or preventing the importation of infringing goods or services and, if so, how quickly are such measures resolved?
The trade mark owner or the exclusive licensee can request the Customs Administration to confiscate allegedly infringing goods (likelihood of confusion suffices) at the border. The applicant must provide all information necessary for the Customs Administration's decision, including a precise description of the goods in question. If the Customs Administration confiscates goods, the applicant and the owner of the confiscated goods are informed that the authority retains the goods, but will release them unless a preliminary injunction is obtained within 10 working days.
In addition, the Customs Administration can, on its own initiative, temporarily withhold goods if it suspects that the goods imported or exported are counterfeit. The trade mark owner or the exclusive licensee will be notified and given a deadline of three days to file a request for confiscation.
15 OTHER RELATED RIGHTS
15.1 To what extent are unregistered trade mark rights enforceable in your jurisdiction?
Unregistered trade marks cannot be enforced in Switzerland, except for well-known trade marks within the meaning of Article 6bis of the Paris Convention. A party using a sign before such sign is registered as a trade mark by another party, is entitled to continue its use. In addition, unregistered signs may be protected by other legislation (such as design, trade name legislation, copyright, unfair competition, and laws on the protection of geographical indications).
15.2 To what extent does a company name offer protection from use by a third party?
The company name registered in the commercial register and published in the Swiss Official Gazette of Commerce is for the exclusive use of the registrant. Its protection comprises a likelihood of confusion; the scope of protection is not restricted to certain goods and services. Apart from the rules governing company names, other statutes provide remedies (e.g. unfair competition law, protection of personality, and also trade mark law, if the company name is registered as a trade mark).
15.3 Are there any other rights that confer IP protection, for instance book title and film title rights?
Switzerland has not adopted a special set of rules governing titles; copyright law may be applicable.
16 DOMAIN NAMES
16.1 Who can own a domain name?
Any natural or legal person can own a domain name.
16.2 How is a domain name registered?
Accredited registrars may register upon request domain names ending in ".ch" or ".li". A list of these registrars is available on the website of "Switch" (www.nic.ch). Domain names bearing generic top-level domains (e.g. ".biz", ".com" or ".info") can be registered with a registrar accredited by the Internet Corporation for Assigned Names and Numbers (ICANN; ". A list of these registrars is available on the website of "Switch" (www.nic.ch). Domain names bearing generic top-level domains (e.g. ".biz", ".com" or ".info") can be registered with a registrar accredited by the Internet Corporation for Assigned Names and Numbers (ICANN; www.icann.org).
16.3 What protection does a domain name afford per se?
The proprietor of a registered domain name has the factual position of exclusivity over the domain name. Other than that, a domain name is not protected per se. For better protection, the domain name may be registered as a trade mark. It should be noted that top-level domains are not considered distinctive and, as such, do not create a distinction which prevents a likelihood of confusion.
17 CURRENT DEVELOPMENTS
17.1 What have been the significant developments in relation to trade marks in the last year?
A major amendment to the TmPA and the Coat of Arms Protection Act entered into force on 1 January 2017 (known as "Swissness-legislation"). It aims to create a more comprehensive legal framework for geographic indications of source. The legislation introduced new or revised rules regarding the use of "Swiss Made" or "Made in Switzerland" for goods and services.
Moreover, a new register for protected designations of origin and protected geographical indications for non-agricultural products was introduced (see also question 2.1 above).
In addition, the trade mark cancellation procedure was amended. Any person may file a request for cancellation of a trade mark with the IPI due to non-use.
17.2 Please list three important judgments in the trade marks and brands sphere that have been issued within the last 18 months.
In February 2017, the Swiss Federal Supreme Court clarified that registrations of trade marks in favour of authorised users are not protected, provided that the authorised user has a conflict of interest or a duty of loyalty towards the trade mark proprietor.
In February 2017, the Swiss Federal Supreme Court dismissed an appeal by Christian Louboutin, a shoe manufacturer famous for high-heeled shoes with red soles. Although the red colour is registered internationally as a positional mark, the Swiss authorities held that the combination of the red colour and its positioning on the outer sole was decorative for women's high heels. Protection was therefore denied.
In January 2017, the Swiss Federal Supreme Court confirmed that trade mark protection for a sign is excluded for the entire class heading if it is registered for protection of only a part of the goods and services assignable to this heading.
17.3 Are there any significant developments expected in the next year?
There are no significant developments foreseen.
17.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?
No, there are not.
Originally published by The International Comparative Legal Guide To: Trade Marks 2018
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.