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What is the primary legislation governing trademarks in your jurisdiction?
The relevant trademark legislation in Switzerland is:
- the Federal Act on the Protection of Trademarks and Indications of Source; and
- the Federal Ordinance on the Protection of Trademarks and Indications of Source.
Which international trademark agreements has your jurisdiction signed?
Switzerland is a member of the Madrid System for the International Registration of Marks; it has signed the Madrid Agreement and the Madrid Protocol.
Which government bodies regulate trademark law?
The Federal Institute of Intellectual Property regulates trademark law in Switzerland.
Rights and protection
Is ownership of a trademark in your jurisdiction determined on a first-to-file or first-to-use basis?
Trademark ownership is determined on a first-to-file basis.
What legal protections are available to unregistered trademarks?
Unregistered trademarks cannot be enforced in Switzerland, except for well-known trademarks within the meaning of Article 6bis of the Paris Convention for the Protection of Industrial Property. In addition, a person using an unregistered trademark is entitled to a prior use defence with regard to a later trademark registration (Article 14 of the Federal Act on the Protection of Trademarks and Indications of Source (the Trademark Protection Act)). Further, unregistered signs may be protected under other legislation, such as company name, copyright and unfair competition legislation or the laws on the protection of geographical indications.
How are rights in unregistered marks established?
Rights in unregistered trademarks must be proven in administrative or civil proceedings.
Are any special rights and protections afforded to owners of well-known and famous marks?
A well-known trademark within the meaning of Article 6bis of the Paris Convention is protected in Switzerland without being registered.
Under Article 15 of the Trademark Protection Act, a famous trademark enjoys a broader scope of protection, which encompasses all goods and services. Further, a famous trademark’s reputation is protected against being unfairly taken advantage of and detrimental acts.
To what extent are foreign trademark registrations recognised in your jurisdiction?
Foreign trademark registrations are not recognised in Switzerland, provided that a well-known trademark within the meaning of Article 6bis of the Paris Convention is recognised.
What legal rights and protections are accorded to registered trademarks?
A trademark owner is the only party entitled to:
- use the trademark in relation to the products and services for which it is registered; and
- dispose of the trademark.
A registered trademark is protected against the creation of a likelihood of confusion in business (including advertisements, offerings, sales, imports, exports and transit). In addition, the import, export and transit of products bearing a confusingly similar sign for private purposes is prohibited.
Who may register trademarks?
Any natural or legal person can own a trademark in Switzerland.
What marks are registrable (including any non-traditional marks)?
Any sign which is graphically represented can be registered as a trademark, including
- combinations of letters;
- graphic images (eg, logos);
- three-dimensional forms (eg, the Mercedes star);
- slogans (eg, "Nespresso, what else");
- position marks; and
- any combination of the aforementioned elements.
Other distinguishing signs, such as musical jingles (eg, that of Coca Cola), moving images and holograms can also be registered as trademarks. As of 2017, registered designations of origin and geographical indications may be registered as geographical marks (eg, VALAIS RACLETTE for cheese).
Can a mark acquire distinctiveness through use?
Yes, a sign in the public domain can acquire distinctiveness through use, unless it is a sign which must remain in the public domain (eg, basic shapes and single letters).
On what grounds will a mark be refused registration (ie, absolute and relative grounds)?
Under Article 2 of the Trademark Protection Act, protection is excluded for the following signs (absolute grounds):
- signs that are in the public domain, except for signs that have acquired a secondary meaning;
- shapes that constitute the nature of the goods themselves or shapes that are technically necessary;
- misleading signs and signs contrary to public policy, morality or applicable law.
Further, under Article 3(1) of the act, signs that create a likelihood of confusion are excluded from trademark protection (relative grounds).
Are collective and certification marks registrable? If so, under what conditions?
Yes, collective and certification trademarks are registrable in Switzerland. The applicant of such a trademark must file regulations governing the use of the trademark with the Federal Institute of Intellectual Property.
Filing and registration
Do agents filing for registration of a mark on behalf of the owner require power of attorney? If so, is notarisation or legalisation required?
In general, no power of attorney is needed for the filing of a trademark application. However, in individual cases and opposition proceedings, the Federal Institute of Intellectual Property (IPI) may request the filing of a written power of attorney.
What information and documentation must be submitted in a trademark registration application?
The applicant must provide the following information:
- a registration application with details of the applicant's (company) name;
- a graphical representation of the trademark; and
- a list of goods and services for which protection is claimed.
If the applicant wants to claim priority, further information must be provided.
The IPI has created a form containing all of the necessary information, which is available on its website.
What rules govern the representation of the mark in the application?
The trademark must be represented in a graphic form. Depending on the type of mark, further information may be required (eg, an indication that it is a three-dimensional mark or a Pantone code for colours).
Are multi-class applications allowed?
Yes. The basic application fee covers three classes.
Is electronic filing available?
Yes, the IPI offers such services.
What are the application fees?
The registration fee for a 10-year trademark is Sfr550, which covers three classes of goods and services. An additional fee of Sfr100 is due for each additional class. An accelerated examination costs Sfr400. Agents’ or attorneys’ fees must also be paid.
How are priority rights claimed?
Priority is claimed in a trademark application or within 30 days from filing the application. The applicant must state the country of first registration and the application's filing date and file a priority declaration within six months.
Are trademark searches available or required before filing? If so, what procedures and fees apply?
The IPI offers trademark searches. However, no such searches are required before or in connection with the filing of a trademark application.
What factors does the authority consider in its examination of the application?
The IPI examines the formal requirements of the application and whether any absolute grounds have been provided.
Does the authority check for relative grounds for refusal (eg, through searches)?
No, the IPI does not check for relative grounds.
If the authority raises objections to the application, can the applicant take measures to rectify the application? If so, what rules and procedures apply?
The IPI informs the applicant of any objections that it may have and provides a timeframe in which it must rectify the application. Eventually, more than one exchange of letters is conducted. In this regard, the applicant can approach the IPI and discuss the rectification.
Can rejected applications be appealed? If so, what procedures apply?
The decision can be appealed within 30 days to the Federal Administrative Court and thereupon to the Federal Supreme Court. The first-instance court examines questions of fact, while the second-instance examination is limited to questions of law.
When does a trademark registration formally come into effect?
A trademark registration comes into effect once a complete application for trademark protection has been filed with the IPI.
What is the term of protection and how can a registration be renewed?
The term of protection is 10 years. This can be renewed for further 10-year periods by filing an application for extension.
What registration fees apply?
The fee for a trademark extension is Sfr700. If the application for extension is filed within six months from the trademark’s expiration, an additional Sfr50 is due.
What is the usual timeframe from filing to registration?
According to the IPI, the registration procedure takes between six working days (for obviously unproblematic applications) and three months from payment of the registration fees. In practice, proceedings can last up to six months. An applicant may apply for an accelerated examination, meaning that the IPI issues a decision on the registration or objection within one month.
Can third parties formally oppose an application? If so, on what grounds and what rules and procedures apply?
A third-party opposition can be filed by the owner of an older trademark on the basis of an alleged violation of relative grounds.
The opposition must be submitted in writing to the IPI within three months from the registration's publication. Further, the opposition fee (at present, Sfr800) must be paid within this period. The procedure usually consists of one written submission, but the IPI may order a second. The IPI examines the likelihood of confusion on the basis of the excerpts from the trademark register. If the opposition is justified, the IPI revokes the registration in whole or in part. Otherwise, the opposition is rejected.
What is the usual timeframe for opposition proceedings?
Opposition proceedings usually take one year or more. The IPI publishes its decisions on its website.
Are opposition decisions subject to appeal? If so, what procedures apply?
An opposition decision can be appealed to the Federal Administrative Court. No further appeal to the Federal Supreme Court is available.
Removal from register
Can a mark be cancelled for non-use? If so, what term of non-use applies and what is the procedure for cancellation?
The non-use of a trademark for a consecutive period of five years constitutes a defence argument in opposition or infringement proceedings.
On what grounds can a trademark registration be revoked (eg, loss of distinctiveness, incorrect registration)?
The Federal Institute of Intellectual Property (IPI) revokes a registration in whole or in part if an opposition is justified or based on a final court decision. Further, it cancels the registration if:
- the proprietor requests the cancellation;
- the registration is not renewed;
- the protected designation of origin or the protected geographical indication on which the geographical mark is based is cancelled; or
- a request for revocation is approved.
Who may file a request for revocation and what is the statute of limitations for filing a request?
Any third party can file a request for revocation of a trademark with the IPI.
What are the evidentiary and procedural requirements for revocation proceedings?
The party requiring the revocation must file prima facie evidence that the opposed trademark has not been used for a consecutive five-year period. The trademark owner is entitled to rebut such claims by filing prima facie evidence that it has used the trademark or that it had important reasons not to do so.
What is the appeal procedure for cancellations or revocations?
IPI decisions can be appealed to the Federal Administrative Court.
What is the procedure for surrendering a trademark registration?
A trademark owner can file a request for cancellation of the trademark with the IPI. Another option is to let the trademark expire by not filing a request for a trademark extension.
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.
Assignment and licensing
What rules and procedures govern the assignment of trademark rights? Must an assignment be recorded to have legal effect?
The assignment of a trademark must be made via a written instrument and can encompass all or part of the trademark. To be valid with regard to third parties, the assignment must be registered with the Federal Institute of Intellectual Property.
What rules and procedures govern trademark licensing? Must a licensing agreement be recorded to have legal effect?
A trademark licence is granted by mutual agreement between the parties. Registration of the licence is unnecessary. However, to be effective with regard to third parties, the licence must be registered.
The exclusive licensee has standing to sue infringers if the licensing agreement does not provide otherwise.
What provisions are typically included in a licensing agreement (eg, quality control clauses)?
The right to use the trademark is granted. Usually, it is specified in which form and for what goods and services the trademark can and should not be used.
A licensing agreement addresses the calculation of royalties and payment terms. In general, an audit right in favour of the licensor is provided.
Depending on the goods and services in question, further requirements (eg, regarding quality) can be provided.
Within the boundaries of antitrust law, the parties remain free to enter into whatever provisions they want.
Can a security interest be registered over a trademark? If so, what rules and procedure apply?
A security interest can be registered based either on a declaration of the trademark owner or sufficient documentary evidence.
Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
A trademark (eg, logo or three-dimensional shape) can be protected as a copyrighted work or be simultaneously registered as a design. More important seems to be the interplay between the Act against Unfair Competition and the Federal Act on the Protection of Trademarks and Indications of Source. The two statutes are to be applied independently (ie, they can be applied cumulatively in a case). The Act against Unfair Competition prohibits behaviours which are disparaging or misleading as well as behaviours which will lead to a likelihood of confusion or an exploitation of the sign’s or a competitor’s reputation. Such unfair behaviours can relate to trademarks and unregistered signs, among other things.
Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
Domain name registrars for domain names ending in ‘ch’ (Switzerland) or ‘li’ (Liechtenstein) must be accredited. A list of these registrars is available on the website of foundation Switch (www.nic.ch). Any party interested can request the registration of a domain name with a country-code top-level domain of ‘ch’ or ‘li’.
A domain name holder has a factual position of exclusivity (ie, nobody else can use the same domain name). According to Swiss law, a domain name holder has no exclusive right in the domain name. However, in order to obtain better protection, it is possible to register a domain name as a trademark. In this regard, country-code top-level domain names are not considered to be distinctive.