Enforcement

Trademark enforcement proceedings

What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions? Are there specialised courts or other tribunals? Is there any provision in the criminal law regarding trademark infringement or an equivalent offence?

Trademark owners seeking to enforce their rights in Switzerland can take civil actions, criminal actions or administrative actions.

Civil actionIn the event of trademark infringement, the owner of the trademark may bring a civil action for a preliminary or permanent injunction, destruction of the counterfeit goods and/or damages.

Criminal actionIf the violation of the trademark is intentional and the conditions for the offences provided by Articles 61 to 65 of the Trademark Protection Act are met, the owner of the trademark may also take action before the cantonal criminal court. The Swiss criminal laws apply. The trademark infringer will be punished by a term of imprisonment of up to one year or a monetary penalty.

Administrative actionThe owner of a trademark may file a written request with the Swiss Customs Administration to withhold goods on which the trademark has been unlawfully affixed (ie, infringing goods). The trademark owner must provide Customs with all relevant information on the mark in question, which Customs may need to decide on the request. Customs will take a final decision on the request.

Competent courtsSwitzerland consists of 26 sovereign cantons, each with its own judicial system.

Cantonal law establishes the competent court to rule as a single cantonal court on disputes relating to trademarks and, in particular, on the infringement of trademark rights.

The decisions of these single cantonal courts may be appealed to the Federal Court, which is the final instance.

Procedural format and timing

What is the format of the infringement proceeding?

TimeframeIt is difficult to estimate an exact duration for an action brought before the court and there is no possibility of requesting an accelerated procedure. However, trademark infringement proceedings are usually concluded within one to two years.

Burden of proof

What is the burden of proof to establish infringement or dilution?

Standing

Who may seek a remedy for an alleged trademark violation and under what conditions? Who has standing to bring a criminal complaint?

Under the Trademark Protection Act, the owner of a trademark can file an infringement action as long as the trademark has been registered in the Swiss trademark register or is a well-known trademark under Article 6bis of the Paris Convention.

Exclusive licensees may bring an action independently of the registration of the licence in the register, provided that the licence agreement does not expressly exclude the right to sue for trademark infringement.

Professional organisations and trade associations, as well as national and regional consumer protection organisations, are entitled to file infringement actions with respect to guarantee trademarks and collective trademarks.

If the violation of the trademark is intentional and the conditions for the offences provided by Articles 61 to 65 of the Trademark Protection Act are met, the owner of the trademark may also take action before the cantonal criminal court.

Border enforcement and foreign activities

What border enforcement measures are available to halt the import and export of infringing goods? Can activities that take place outside the country of registration support a charge of infringement or dilution?

The customs authorities are empowered to inform the owner of a trademark where they suspect that imported, exported or in-transit products are unlawfully covered by the trademark.

Customs authorities are entitled to retain the products for three working days to allow the trademark owner to intervene.

The rightful owner of the trademark may file a written request for the Customs Administration to refuse to release these products. The owner must support the request with complete information on their trademark rights and a precise description of the products.

Customs authorities will then deliver a notification of withholding of potentially infringing goods and the rightful owner of the trademark has 10 days to obtain an injunction by a civil court, a seizure order by a criminal prosecution authority or the agreement of the infringing goods’ owner to the destruction of the withheld goods.

Discovery

What discovery or disclosure devices are permitted for obtaining evidence from an adverse party, from third parties, or from parties outside the country?

Timing

What is the typical time frame for an infringement or dilution, or related action, at the preliminary injunction and trial levels, and on appeal?

Limitation period

What is the limitation period for filing an infringement action?

An opposition before the Federal Institute of Intellectual Property can be filed by the owner of an earlier trademark within three months of the publication of the identical or similar subsequent trademark.

An action before an ordinary court can be filed at any time.

 

Litigation costs

What is the typical range of costs associated with an infringement or dilution action, including trial preparation, trial and appeal?

Appeals

What avenues of appeal are available?

The decisions on the infringement of trademark rights of the cantonal court may be appealed before the Federal Court. This is the court of final instance. The grounds for an appeal are limited to the violation by the cantonal court of federal and/or international laws.

Defences

What defences are available to a charge of infringement or dilution, or any related action?

Infringers can defend themselves by:

  • challenging the validity of the trademark;
  • claiming non-use of the supposedly infringed trademark;
  • arguing that there is no likelihood of confusion between the two trademarks;
  • providing proof that they have a prior right of use; or
  • affirming that the trademark owner has allowed a significant period of time to elapse without reacting and therefore has given the alleged infringer reasonable grounds to believe that the owner would not bring claims for trademark infringement.
Remedies

What remedies are available to a successful party in an action for infringement or dilution, etc? What criminal remedies exist?

The successful party in an infringement action can obtain civil or criminal remedies.

Civil remedies include:

  • declaration of the infringing registration as null and void;
  • assignment of the infringing trademark rights;
  • payment of damages;
  • surrender of profits or restitution of unjust enrichment; and
  • confiscation of objects on which the trademark has been unlawfully affixed.

Criminal remedies include:

  • monetary penalties;
  • deprivation of liberty for up to one year; and
  • confiscation of objects on which the trademark has been unlawfully affixed.

If the offender acts by business line, they shall be prosecuted ex officio. The sentence is a custodial sentence of up to five years or a monetary penalty. In case of a custodial sentence, a monetary penalty shall also be imposed.

Injunctive reliefIn the event of trademark infringement, affected persons may ask the court to take provisional measures to:

  • ensure the preservation of evidence;
  • determine the origin of objects unlawfully bearing the trademark;
  • preserve the facts; and
  • temporarily prevent or stop the infringing acts.

The applicant will obtain a provisional decision within a short timeframe. There will then be a trial and the questions submitted to the provisional measures judge will be reviewed.

The applicant must provide plausible evidence that two conditions have been met in order for provisional measures to be imposed:

  • unlawful infringement exists (current or imminent); and
  • the infringement causes or is likely to cause damage that is difficult to repair.
ADR

Are ADR techniques available, commonly used and enforceable? What are the benefits and risks?

Law stated date

Correct on

Give the date on which the information above is accurate.

9 January 2019.