Registration and useOwnership of marks
Who may apply for registration?
Any natural or legal person may register a trademark in Switzerland. However, if the person who files a trademark application is not a Swiss citizen or domiciled in Switzerland, or does not have a registered office in Switzerland, they must designate an address for service in Switzerland.Scope of trademark
What may and may not be protected and registered as a trademark?
Swiss trademark law recognises the registration of signs that can be graphically represented and are capable of distinguishing the goods or services of one entity from those of another. Signs consisting of the following are registrable under the Swiss law:
- words, letters and numerals;
- figurative images;
- three-dimensional shapes;
- slogans; and
- combinations of such elements.
Swiss law also recognises trademarks consisting of sounds (acoustic trademarks), smells (olfactory trademarks), motions and taste.Unregistered trademarks
Can trademark rights be established without registration?
Unregistered signs may be protected as follows:
- under the Federal Act against Unfair Competition 1986;
- as moral rights to a name;
- as geographical indications; and
- by copyright law.
Well-known unregistered trademarks may also enjoy protection under Article 6bis of the Paris Convention.
The Trademark Protection Act also provides the right to continue using a sign if a third party subsequently registers an identical or similar mark. The right to prior use is limited to prior users and to the extent of actual prior use.Famous foreign trademarks
Is a famous foreign trademark afforded protection even if not used domestically? If so, must the foreign trademark be famous domestically? What proof is required? What protection is provided?
The Trademark Protection Act grants protection to trademarks that qualify as well-known trademarks within the meaning of Article 6bis of the Paris Convention. Such well-known trademarks enjoy protection similar to registered trademarks if the owner can prove that the trademark is well known in the relevant Swiss market. This requires evidence of significant sales and advertising within Switzerland over an extensive period. The Federal Administrative Court has clarified that Swiss citizens and companies may invoke this protection only if they own a foreign trademark registration.
Ownership of foreign trademark registrations confers no protection in Switzerland, except for a claim of priority under the Paris Convention.
As per the German-Swiss agreement regarding mutual patent, design and trademark protection, use of an identical German trademark, which is registered for the same goods or services in Germany and Switzerland, will be considered as valid use in Switzerland and vice versa if the trademark owner has a place of business and legal seat in either of the two countries.The benefits of registration
What are the benefits of registration?
A trademark registration confers on the owner the exclusive right to use the trademark to identify the goods or services for which it is claimed and to commercially exploit it. In particular, the registered owner has the following rights:
- to prohibit others from using in commerce an identical or confusingly similar sign for the designation of goods or services;
- to license the trademark to third parties;
- to oppose subsequent conflicting applications;
- to file cancellation actions against subsequent third-party conflicting marks;
- to sue third parties for infringement; and
- to request customs authorities to confiscate counterfeit goods being imported into Switzerland.
What documentation is needed to file a trademark application? What rules govern the representation of the mark in the application? Is electronic filing available? Are trademark searches available or required before filing? If so, what procedures and fees apply?
A trademark application must provide the following information:
- details of the name or company name of the applicant (name, address and entity type);
- a representation of the trademark if the trademark is figurative or combined; and
- a list of the goods or services for which protection is claimed.
The acceptance of the trademark application is subject to payment of the official filing fee.
Agents/attorneys/representatives filing on behalf of the owner must have a registered office in Switzerland or designate an address for service in Switzerland. Notarisation or legalisation of the power of attorney is not required.
For trademarks that are not in standard characters, the applicant must provide one graphic representation of the trademark along with a description of the trademark and its features.
Applications can be filed online at https://e-trademark.ige.ch/etrademark/index.jsf.
A pre-filing trademark search is not mandatory for filing a trademark application. However, it is recommended to ascertain any prior third-party rights in the trademark before filing an application.
The Federal Institute of Intellectual Property operates the free-of-charge Swissreg database, which allows for searches of national trademarks and trademark applications.
In addition, applicants can formally request the Federal Institute of Intellectual Property to carry out a pre-filing search on its behalf (subject to fees).Registration time frame and cost
How long does it typically take, and how much does it typically cost, to obtain a trademark registration? When does registration formally come into effect? What circumstances would increase the estimated time and cost of filing a trademark application and receiving a registration?
In a straightforward case where the Federal Institute of Intellectual Property raises no objections and no third-party opposition is filed, the normal timeframe from filing to registration is approximately six months.
The official charge for filing a trademark application covering up to three classes is Sfr550. For each additional class, the applicant must pay Sfr100. There is no registration fee for the issuance of the registration certificate.
A trademark right is established on entry in the trademark register. However, the term of the registration begins from the date of application.Classification system
What classification system is followed, and how does this system differ from the International Classification System as to the goods and services that can be claimed? Are multi-class applications available and what are the estimated cost savings?
Switzerland is a signatory to the Nice Agreement on the International Classification of Goods and Services.
Multi-class applications are allowed. The official charge for filing a trademark application covering up to three classes is Sfr550. For each additional class, the applicant must pay Sfr100.Examination procedure
What procedure does the trademark office follow when determining whether to grant a registration? Are applications examined for potential conflicts with other trademarks? Are letters of consent accepted to overcome an objection based on a third-party mark? May applicants respond to rejections by the trademark office?
The Federal Institute of Intellectual Property examines the formal requirements and whether absolute grounds for refusal exist. The trademark application is examined in respect of the following:
- compliance with filing requirements and correct classification of goods and services;
- whether the sign is in the public domain (ie, lacks distinctiveness);
- whether the sign is descriptive;
- whether the sign is misleading or deceptive; and
- whether the sign violates public order, morality or applicable law.
The Federal Institute of Intellectual Property does not check for relative grounds of refusal in its examination. However, as per the Trademark Protection Act (effective 28 August 1992), relative grounds may be invoked by the owner of an earlier trademark by way of opposition or civil suit in a court of law.
Where the Federal Institute of Intellectual Property raises objections to an application, it will normally issue a notification of irregularity and the applicant has three months to respond.Use of a trademark and registration
Does use of a trademark or service mark have to be claimed before registration is granted or issued? Does proof of use have to be submitted? Are foreign registrations granted any rights of priority? If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use?
Non-useA trademark registration can be challenged on grounds of non-use if the mark has not been used for an uninterrupted period of five years following expiry of the opposition period or conclusion of opposition proceedings. The request for cancellation can be brought before the Federal Institute of Intellectual Property or the competent civil court.
Action before the Federal Institute of Intellectual PropertyAny person can file a request for cancellation of a trademark before the Federal Institute of Intellectual Property on grounds of non-use. Cancellation requests may concern both Swiss trademarks and the Swiss part of international registrations. This is an administrative procedure. The request must be submitted using the prescribed form and on payment of the official tax of Sfr800.
The request must be justified, in particular by establishing the plausibility of the lack of use. It is therefore necessary to present, at the same time as the request, the evidence on which the likelihood of non-use is based. The likelihood of non-use will not generally be accepted on the basis of a single piece of evidence. In the absence of a statement of reasons or adequate means of proof, the applicant is granted a period within which to remedy the situation. The request for cancellation will be declared inadmissible if these deficiencies are not remedied within the additional time limit set.
The Federal Institute of Intellectual Property will reject the request if:
- the applicant fails to show credible non-use of the trademark; or
- the owner of the trademark shows credible use of the trademark or proper reasons for its non-use.
Where credible non-use is shown for only some of the goods or services claimed, the Federal Institute of Intellectual Property will approve the request only to the extent thereof. Further, non-use can be excused in the event of import restrictions, as a result of government policies or force majeure (ie, circumstances outside the control of the trademark owner).
Civil court actionAn action for cancellation on grounds of non-use can also be brought before a civil court, in which case the Civil Procedure Code will apply. The evidentiary requirements are stricter in such cases.
PriorityAn applicant can claim priority under the Paris Convention or exhibition priority.
Paris Convention priorityWhere a trademark is first duly filed in another member state of the Paris Convention, the applicant may claim priority from the date of the first filing, provided that the filing in Switzerland takes place within six months of the date of first filing.
Exhibition priorityAny person who exhibits goods or services bearing a trademark at an official or officially recognised exhibition in a member state of the Paris Convention may claim the opening date of the exhibition for filing the application, provided that the trademark is filed within six months of this date.
Any person who claims priority under the Paris Convention or exhibition priority must file a declaration of priority with the Swiss Federal Institute of Intellectual Property.Markings
What words or symbols can be used to indicate trademark use or registration? Is marking mandatory? What are the benefits of using and the risks of not using such words or symbols?Appealing a denied application
Is there an appeal process if the application is denied?
Decisions of the Federal Institute of Intellectual Property to reject an application can be appealed within 30 days to the Federal Administrative Court and thereafter to the Federal Supreme Court.
Are applications published for opposition? May a third party oppose an application prior to registration, or seek cancellation of a trademark or service mark after registration? What are the primary bases of such challenges, and what are the procedures? May a brand owner oppose a bad-faith application for its mark in a jurisdiction in which it does not have protection? What is the typical range of costs associated with a third-party opposition or cancellation proceeding?
A registration is published for opposition on grant of registration. The owner of an earlier trademark may file an opposition to a registration on the basis of earlier proprietary rights, such as:
- prior conflicting Swiss trademark applications or registrations;
- prior international registrations designating Switzerland; and
- famous or well-known trademarks within the meaning of Article 6bis of the Paris Convention.
The opposition must be submitted in writing to the Federal Institute of Intellectual Property with a statement of reasons along with the official opposition fee of Sfr800.
If the opposition is justified, the registration will be revoked in whole or in part; if this is not the case, the opposition will be rejected.
If use of the prior mark is not challenged, opposition proceedings usually take one to two years.
The decision of the Federal Institute of Intellectual Property in opposition proceedings can be appealed to the Federal Administrative Court, whose decision is final.
Opposition period for Swiss national registrationThe non-extendable three-month period to file opposition starts from the publication date.
Opposition period for international registration designating SwitzerlandThe non-extendable three-month period to file opposition starts from the first day of the month following the month of publication in the WIPO Gazette.Duration and maintenance of registration
How long does a registration remain in effect and what is required to maintain a registration? Is use of the trademark required for its maintenance? If so, what proof of use is required?
A registration is valid for 10 years from the date of application. A registration can be renewed indefinitely for subsequent 10-year periods on submission of an application for renewal and payment of the Sfr700 renewal fee. The application for renewal must be submitted to the Federal Institute of Intellectual Property within the 12 months before expiry of the term of validity. Late renewal requests are accepted within six months after expiry on payment of additional charges.Surrender
What is the procedure for surrendering a trademark registration?
The owner of a trademark may request the cancellation of their trademark at any time. The total or partial cancellation of the registration is not subject to any fee. This is an express request in writing.Related IP rights
Can trademarks be protected under other IP rights (eg, copyright, designs)?
Trademark rights can overlap with other rights, particularly copyright, designs, moral rights (eg, rights in one’s own name), rights to a company name and rights under geographical indications and unfair competition laws.
The Trademark Protection Act protects owners against the use of confusingly similar trademarks in connection with similar goods and services as an identifier of commercial origin. Other types of use – such as comparisons with a competitor’s products, imitations of trade dress and denigration – may be pursued under the Unfair Competition Act. In practice, both acts are often invoked simultaneously.Trademarks online and domain names
What regime governs the protection of trademarks online and domain names?
A domain name registration is not an IP right. However, domain names are central to business and communication, since they act as identifiers of the company on and off the Internet. Therefore, certain issues may arise in connection with trademark rights.
In Switzerland, a person whose trademark right is infringed may bring an action based on trademark law, unfair competition law, civil law for protection of names and the law protecting business names. If a third party invokes rights against the domain name holder, this is a matter to be settled between the two by civil lawsuit or dispute resolution procedure.
Further, the Ordinance on Internet Domain Names (adopted on 5 November 2014) governs the management of ‘.ch’ and ‘.swiss’ domain names. Article 14 of the ordinance provides for dispute resolution procedures which must be implemented by managers of top-level domains.
Disputes over domain names may also be decided and settled by a World Intellectual Property Organisation panel under the Rules of Procedure for Dispute Resolution Proceedings for ‘.ch’ and ‘.li’ Domain Names.
Law stated dateCorrect on
Give the date on which the information above is accurate.
9 January 2019.