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Which courts are empowered to hear trademark disputes?
In each of the 26 cantons, one court is competent to hear trademark disputes. Cantonal court judgments can be appealed to the Federal Supreme Court.
IPI opposition decisions can be appealed to the Federal Administrative Court. No further appeal to the Federal Supreme Court is available.
What actions can be taken against trademark infringement (eg, civil, criminal, administrative), and what are the key features and requirements of each?
Regarding trademark infringements, Swiss law provides for civil actions, criminal penalties and Customs measures.
The civil actions encompass the possibilities to:
- prohibit an anticipated infringement;
- seize infringing products; and
- claim damages.
Who can file a trademark infringement action?
A third party which alleges the infringement of its superior trademark rights can file a trademark infringement action. Such a party can be the owner or the exclusive licensee of the trademark.
What is the statute of limitations for filing infringement actions?
Claims for damages are time barred one year from the date on which the trademark owner became aware of the damage and the identity of the party liable for it. In any event, such claims are time barred 10 years from the date on which the damage was caused. However, if 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.
In general, other claims regarding trademark infringements (including requests for preliminary injunctions) are not time barred. However, if the trademark owner tolerates an infringement for a certain period, it can no longer sue the infringer. The infringer must demonstrate that:
- the trademark owner knew or should have known about the infringement;
- the trademark owner remained inactive for a longer period of time;
- the infringer acquired a valuable market position by using the trademark; and
- the infringer acted in good faith.
What is the usual timeframe for infringement actions?
Infringement proceedings in civil courts may take between one and three years, depending on how many briefs the parties are entitled to file and how extensive the taking of evidence is. In case of an appeal to the Federal Supreme Court, these additional proceedings take a maximum of one year.
What rules and procedures govern the issuance of injunctions to prevent imminent or further infringement?
The applicant may obtain preliminary injunctions if it shows prima facie that:
- the defendant violated its trademark or such violation is anticipated; and
- such violation threatens to cause harm to the applicant which is not easily reparable.
In addition, the applicant must act within a reasonable timeframe when becoming aware of a violation or an anticipated violation. If the applicant fails to do so, it loses its right to obtain preliminary injunctions.
In general, the court decides only after having heard the defendant. In cases of special urgency – in particular, where a risk that the enforcement of the injunctions will be frustrated exists – the court may order preliminary injunctions without hearing the defendant (ie, ex parte preliminary injunctions). At the same time, the court must summon the parties to a hearing or set a deadline for the defendant to comment in writing. Having heard the opposing party, the court decides 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. Further, the court may refrain from ordering preliminary injunctions if the defendant provides appropriate security.
Together with ordering preliminary injunctions, the court sets a timeframe within which the applicant must file its main action. In the event of default, the ordered injunctions become ineffective.
During pending main proceedings, the competent court issues preliminary injunctions if the claimant meets the abovementioned requirements.
What remedies are available to owners of infringed marks? Are punitive damages allowed?
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 the extent of distribution, as well as the infringer’s name;
- uphold actions for damages, satisfaction and the handing over of profits; or
- publish the judgment at the unsuccessful party’s expense.
Swiss law does not provide for claims for punitive damages.
What customs enforcement measures are available to halt the import or export of infringing goods?
A trademark owner can request Customs to confiscate allegedly infringing goods at the border. The applicant must provide all information necessary for the Customs decision, including a precise description of the goods in question. If Customs confiscates goods, the applicant and the owner of the confiscated goods are informed that Customs will retain the goods, but release them unless a preliminary injunction is obtained within 10 working days.
In addition, Customs can, on its own initiative, temporarily withhold temporarily goods if it suspects that the goods imported or exported are counterfeit. The trademark owner or the exclusive licensee will be notified and given three days to file a request for confiscation.
What defences are available to infringers?
An alleged infringer may invoke the following defences:
- no likelihood of confusion;
- non-use of the trademark by the claimant for a consecutive five-year period;
- invalidity of the trademark (to be raised either as a defence or counterclaim):
- prior use;
- exhaustion of trademark rights; or
- a statute of limitation.
What is the appeal procedure for infringement decisions?
The judgments of the cantonal courts, which are competent in the first instance, can be appealed within 30 days to the Federal Supreme Court. The latter examines only questions of law.
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