Yearbook 2021/2022 A global guide for practitioners - Switzerland - Meisser & Partners
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Yearbook
2021/2022
A global guide for practitioners
Switzerland
Meisser & Partners AG
Marco Bundi and Benedikt Schmidt
Supported by
Your leading trademarks team in Switzerland We are a team of eight professionals (attorneys at law, paralegals, secretaries) fully specialised in trademarks work and related areas. We represent local and foreign clients in Switzerland and are internationally responsible for a number of well-known brands, amongst others in the fields of tobacco (cigars), cosmetics, tourism, financial services, stock exchange indices, food, textiles, sporting goods, supermarkets, technical products and names of celebrities. We provide prosecution and litigation services, including trademarks clearance, filing, prosecution, licensing, anti-counterfeiting, customs measures, Alternative Dispute Resolution and legal services in related areas (incusing designs, copyrights, trade names, geographical indications, personal rights, unfair competition, patent litigation), as well as notarial services (establishing companies, notarization of documents). You will find further information on our office, our publications, our fees and further resources at www.swisstm.com Dr. J. David Meisser Lic. Benedikt Schmidt Dr. Marco Bundi Consultant Attorney at Law LL.M., Attorney at Law, Notary Public Meisser & Partners AG Postal Address and Office: Office Klosters: Office Zurich: mail@swisstm.com Schulstrasse 1 Bahnhofstrasse 6 Hafnerstrasse 45 Tel +41 81 410 23 23 CH-7302 Landquart CH-7250 Klosters CH-8005 Zurich Fax +41 81 410 23 24 Switzerland Switzerland Switzerland www.swisstm.com
Switzerland
Meisser & Partners AG
Authors
Marco Bundi and Benedikt Schmidt
Legal framework • the Nice Agreement on the International
National Classification of Goods and Services; and
The basic principles for trademark protection in • the Trademark Law Treaty.
Switzerland are contained in the Federal Act on
the Protection of Trademarks and Indications Unregistered marks
of Source and the Trademark Protection Generally, trademark rights are established
Ordinance. The latest revisions of the act through entry in the trademark register.
regarding ‘Swissness’, providing administrative Well-known unregistered trademarks may
trademark cancellation proceedings on the enjoy protection under Article 6bis of the
grounds of non-use and better protection Paris Convention.
for Swiss geographical indications, as well The use of unregistered signs may, in
as establishing a register for geographical individual cases, be protected:
indications for non-agricultural products and • by the Federal Act against Unfair
a register for geographical marks, entered into Competition;
force on 1 January 2017. • as moral rights to a name;
• as foreign trade names under the Paris
International Convention;
Switzerland has signed most pertinent • as geographical indications; and
international agreements, including: • by the Federal Act on Copyright and Related
• the Paris Convention for the Protection of Rights.
Industrial Property;
• the Madrid Agreement on the The Federal Act on the Protection of
International Registration of Marks and the Trademarks and Indications of Source
Madrid Protocol; provides the right to continue using a sign to
• the Agreement on Trade-Related Aspects of the same extent if a third party subsequently
Intellectual Property Rights; registers an identical or similar mark.
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SWITZERLAND MEISSER & PARTNERS AG
Registered marks Registrability
Any natural or legal person can apply for All signs that are capable of distinguishing the
trademark registration in Switzerland goods and services of one undertaking from
(restrictions apply to geographical and those of another are registrable. Provided that
collective marks). Foreign applicants they can be represented graphically, marks may
must indicate an address for service in be any kind of sign, including:
Switzerland. There is no requirement of use • words, letters and numerals;
or intent to use for filing an application. Still, • figurative representations;
trademarks that have been registered without • three-dimensional (3D) shapes;
any intention to use may be challenged. • colours;
The current fee is Sfr550 for filing an • sounds;
application in up to three classes. Multi-class • motion marks;
applications are available. • holograms;
Marco Bundi Benedikt Schmidt
Partner Partner
bundi@swisstm.com schmidt@swisstm.com
Marco Bundi studied law in Zurich. He was Benedikt Schmidt studied law in Zurich
admitted to the Bar in 2005 and subsequently and Paris. He was admitted to the Bar in
joined the Swiss Bar Association. He practised Switzerland in 2004. He joined Meisser &
law before the cantonal courts before obtaining Partners AG in 2005 and became a partner
his LLM (University of Bern). He joined Meisser in 2012.
& Partners AG in 2006, after working at the Mr Schmidt has written several articles on
UN Special Court in Sierra Leone. He writes on various aspects of trademark law, as well as
various aspects of trademark law and regularly three chapters within a standard publication
contributes to the World Trademark Review. on geographical indications. His practice
He obtained his doctorate from the includes counselling on registrability and
University of Bern in 2008 and became a enforcement of IP rights – mainly trademarks,
notary public in 2014. His practice covers design patents and copyrights – including
IP rights enforcement, including domain anti-counterfeiting, customs measures,
disputes, unfair competition issues (including domain disputes and protection against
counterfeiting and passing off) and unfair competition. He is a member of the
proceedings before national authorities and Swiss Bar Association, the Swiss Association
courts. He became a partner in 2012. for Intellectual Property Law, INTA, the
International Association for the Protection of
Intellectual Property and the Pharmaceutical
Trademarks Group.
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MEISSER & PARTNERS AG SWITZERLAND
• position marks; 20 and 24 (direct geographical indications
• combinations of the above; or are registrable if they are registered in the
• other non-traditional marks (eg, olfactory country of origin, provided that the goods
marks). are limited to said origin; or the service
provider is of said origin); and a red sole for
The Federal Administrative Court accepted women’s shoes (position mark);
olfactory marks in principle, but denied • general indications of quality or purely
protection in a particular case due to a lack of promotional signs (eg, SUPER, MASTER,
graphical representability. MASTERPIECE, TOP, HYPE, PRIMO
The Federal Act on the Protection or ROYAL);
of Trademarks and Indications • common or banal signs (eg, ENTERPRISE
of Source differentiates between or NETTO), references to a company form
individual, certification, collective and (eg, Ltd), ccTLDs and generic TLDs (eg,
geographical marks. ‘.com’ and ‘.ch’), telephone numbers (eg,
Article 2 of the act excludes signs from 0800), plant variety denominations and
registration that are: international non-proprietary names; and
• in the public domain, unless they have • shapes that are expected and common in
acquired secondary meaning; the relevant sector – such forms can be
• shapes constituting the nature of the goods registered as 3D marks in case they are
or shapes of the goods or their packaging combined with distinctive two-dimensional
that are technically necessary; elements that significantly affect the
• misleading; or overall impression.
• contrary to public policy, morality or
applicable law. Names of persons and characters may be
registered, unless they are frequently cited
The relevant languages for examination are to describe the goods or services or must be
the official languages (French, German, Italian kept free for trade (eg, MOZART in Class 9 or
and Rhaeto-Romanic) and basic English, RAPUNZEL in Classes 9, 14, 16, 20, 21, 28 and
which is considered to be known by the 41).
average consumer. A trademark may consist of distinctive and
non-distinctive elements and is registrable
Public domain: Signs that are in the public if one significant element is distinctive.
domain are signs that lack distinctiveness or Disclaimers are neither required nor
must be kept free for trade. Signs that lack permissible for non-distinctive elements.
distinctiveness include: Signs that must be kept free for trade are
• single numerals or single letters of the Latin those which are indispensable to that trade
alphabet; (eg, abstract colours such as the colour blue for
• simple geometrical signs (eg, circles beverages, POST for postal and MARCHÉ for
and rectangles); restaurant and food services).
• descriptive signs – including words, images, Signs that initially lack distinctiveness
slogans or pictograms that describe the and that are not absolutely indispensable
nature, quality, quantity, purpose, effect, for trade may acquire secondary meaning
content, get-up, addressee, geographical and be registered on evidence of extensive
origin or other characteristics of the goods use in Switzerland. The Federal Institute of
or services – for example: KEYTRADER Intellectual Property (IPI) typically requires
in Class 36; MUFFIN KING in Class 30; proof of use over several years (usually 10
NOBLEWOOD in Classes 2, 19 and 27; years) in all Swiss territories (French, Italian
VIAGGIO in Class 12; COOL ACTION in and German speaking parts) as a trademark
Class 3; JAZZ in Class 9; GOLD BAND in (eg, not as a company name), in relation to
Class 34; OKTOBERFEST-BIER in Class 32; the designated goods and services and to a
VERY IMPORTANT PHARMACY in Classes significant extent. Documents or surveys are
3, 5 and 44; and SIBIRICA in Classes 10, accepted as evidence.
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SWITZERLAND MEISSER & PARTNERS AG
Shape marks: Shape marks that are 3D signs BUND in Class 29; and THE HARLEM
additionally applied to goods (ie, the star on GOSPEL SINGERS in Class 25).
Mercedes-Benz cars) are examined by the
IPI based on whether they are in the public Applications for marks that evoke a
domain. However, shape marks that represent geographical origin may still be registered
the shape of the goods or their packaging if the sign is distinctive and if the goods or
cannot be registered if they are in the public services are restricted to the respective origin
domain, if their features correspond to the (eg, AFRI-COLA for African beverages). A
nature of the goods (eg, a ring) or which are foreign indication should meet the statutory
determined by technical necessities. Such requirements of the country concerned,
shapes cannot acquire secondary meaning. subject to misleading Swiss consumers. A
Swiss indication is generally considered being
Misleading signs: A trademark is misleading of Swiss origin if:
if it creates expectations that are not fulfilled • products are grown and harvested in
by the goods or services marked (eg, CAFÉ for Switzerland (natural products);
coffee substitutes). The most relevant cases • 80% of the raw material weight is of Swiss
in this field are geographical indications that origin and the processing step that gives
mislead as to the origin of the designated goods the product its essential characteristics is
or services. The IPI is strict when it comes to carried out in Switzerland (foodstuffs); or
geographical indications and holds that a sign • 60% of the manufacturing costs are
consisting of or containing a geographical term accumulated in Switzerland and the
evokes the expectation that the designated processing step that gives the product its
goods originate in that location. This essential characteristics is carried out in
presumption is rebuttable if: Switzerland (industrial products).
• the place is unknown;
• the sign has a clear and direct other or Public policy: Signs against public policy or
symbolic meaning; morality include racist, religiously hostile or
• the place is obviously unsuitable sexually offensive signs or names of prominent
for production or commerce of the individuals (without their consent) (eg,
goods claimed; BUDDHA BAR in Classes 9 and 41; MADONNA
• the sign is a designation of type; in various classes; and MINDFUCK in Classes
• the sign has acquired secondary meaning; 21, 25, 35 and 41). Signs against applicable law
• the sign has degenerated into a include those containing protected names,
denomination of a genus (eg, Hamburger for coats of arms and emblems (Swiss national
food products); or legislation goes beyond Article 6ter of the
• the overall impression does not evoke the Paris Convention) and any other signs that
expectation of any geographical origin (eg, are prohibited by law (eg, ‘mild’ for tobacco
the geographical term in the mark rather products).
refers to the point of sale, the place of an
event, the content, the owner of the mark Geographical marks: The new law established
or others, such as DEUTSCHER FUSSBALL- a register for geographical indications for
A trademark is misleading if it creates expectations
that are not fulfilled by the goods or services marked
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MEISSER & PARTNERS AG SWITZERLAND
non-agricultural products and a register for IPI will then examine the application within
geographical marks. It is possible to register four weeks. Swiss trademark applications
geographical indications (both agricultural and (unlike international applications designating
non-agricultural), wine designations recognised Switzerland) may be amended during the
by the cantons and indications of source that application process. However, in case of
are the subject of a Federal Council ordinance significant amendments, the application date
(eg, for watches) as geographical marks. The will shift to the date on which the amendments
applicant of a geographical mark must be a were filed. IPI decisions can be appealed to the
representative group and must file regulations Federal Administrative Court and thereafter to
governing the use of the mark. Anyone who the Federal Supreme Court.
fulfils the conditions is entitled to use the
geographical mark. A geographical mark is Opposition
not vulnerable in case of non-use; it cannot Oppositions to a registration may be filed by the
be licensed or transferred, and no opposition owners of:
based on a geographical mark can be filed. • prior Swiss national trademark applications
or registrations;
Maintenance • prior International registrations designating
Declarations or evidence of use need not be Switzerland; and
submitted to the IPI in order to maintain a • trademarks that are well known in
trademark registration. Trademarks that are Switzerland under Article 6bis of the
not used for an uninterrupted five-year period Paris Convention.
(starting from the expiry of the opposition
period for national marks, the declaration of The non-extendable three-month
grant of protection for International marks opposition period starts from the registration
or a final decision in case of a refusal or and publication date (for national
opposition) may be challenged on the grounds registrations) or the first day of the month
of non-use before the IPI or civil courts, unless following publication in the WIPO Gazette
proper reasons for non-use exist. Non-use may (for international registrations). The official
be invoked by the defendant in opposition fee is Sfr800. Compensation awarded to
proceedings and before civil courts. the prevailing party is between Sfr1,200
If use of the trademark is commenced or and Sfr2,400. If use of the prior mark is not
resumed after more than five years, the right challenged, proceedings usually take one to
to the trademark is restored with effect from two years. IPI opposition decisions can be
the original priority date, unless non-use has appealed to the Federal Administrative Court,
been invoked prior to the commencement or whose decision is final.
resumption of use.
Generally, the trademark must be used Registration and duration
as registered. However, minor variations are The trademark is protected as of the application
permissible in order to prove genuine use, date for a 10-year period and can be renewed
as long as the distinctive core of the mark is for further 10-year periods. The renewal fees are
maintained. Omitting (distinctive) elements is Sfr700, irrespective of the number of classes. A
generally more critical than adding such. six-month grace period exists for late renewal
(against an additional Sfr50 fee).
Procedures The use of the ® symbol is not mandatory.
Examination Its use for a mark that is not registered may be
The IPI examines applications on absolute considered as an act of unfair competition.
grounds only. Relative grounds may be raised
by holders of earlier rights within opposition Removal from register
or civil proceedings. The timeframe from The IPI may not cancel registered trademarks
application to examination or registration is ex officio. Third parties may particularly
usually six days to six months. Accelerated request removal based on absolute or relative
examination can be requested for Sfr400. The grounds, abusive registration or non-use
www.WorldTrademarkReview.com World Trademark Review Yearbook 2021/2022 | 191SWITZERLAND MEISSER & PARTNERS AG
before civil courts. Cancellation proceedings A key question is usually whether there
based on non-use can also be initiated within is likelihood of confusion in the relevant
a simplified administrative proceeding before trade circles. The main factors for likelihood
the IPI. The requesting party must show of confusion are the similarity of signs, the
prima facie evidence of non-use, while the similarity of goods and services and the
owner of the mark must provide prima facie distinctiveness of the earlier mark. Weak or
evidence of use. An in-use search provided diluted trademarks or trademark elements
by a service provider may be considered as (eg, CHIC for Class 3; ELLE for women’s
sufficient evidence before the IPI. The official clothing; FM for broadcasting; or NEWCARE
fee for administrative proceedings is Sfr800. for care products) enjoy a narrower scope of
Party compensation is between Sfr1,200 and protection, while well-known marks enjoy a
Sfr2,400, plus compensation of expenses broader scope.
for in-use searches may be awarded to the Article 15 of the act allows a rights holder
prevailing party. of a famous trademark to take action against
use in relation to any goods or services if the
Enforcement distinctiveness of its trademark is jeopardised
Grounds of infringement and proceedings (dilution) or its reputation is exploited
The owner of an earlier mark may prohibit or affected.
others from using an identical or similar mark Customs may suspend the import, export
for identical or similar goods and services or transit of suspicious goods ex officio or on
in case likelihood of confusion results. The application. The applicant must then obtain
scope of protection covers any use of the mark preliminary measures. Simplified proceedings
as a distinctive sign in the course of trade, are available. For example, the consent of the
including in import, export or transit (eg, as declarant, holder or owner is deemed to be
mark, company or domain name). The owner of given if he or she does not expressly object
an earlier mark may particularly introduce an to destruction.
opposition, civil action, criminal action and/or
customs measures. Preliminary measures are Defences and remedies
available. Defences may include:
The Federal Act on the Protection of • no likelihood of confusion or non-
Trademarks and Indications of Source infringement;
indicates no time limit for civil actions. • earlier mark is void or not enforceable due to
Generally, after four to eight years, the non-use;
civil courts may dismiss an action due • prior rights or prior use and the right to
to forfeiture. In case of bad faith, there is continued use;
usually no forfeiture. Provisional injunctions • private, non-commercial use (however,
should be brought before the court within private import, export or transit can be
approximately four months. Criminal stopped);
complaints must be submitted within three • fair (ie, descriptive/informative/decorative)
months after the offender has become known. use;
If the offender acts for commercial gain, he or • exhaustion of rights; and
she will be prosecuted ex officio. • forfeiture.
As a general rule, the burden of proof lies
with the party deriving rights from an alleged Remedies may include:
fact. This party bears the consequences of lack • securing evidence;
of evidence. The registered trademark owner • declaratory judgment;
enjoys a presumption that its rights are valid. • injunction/prohibition;
In criminal proceedings it is often difficult to • remedy of existing infringement;
present sufficient evidence of commercial use • disclosure of information to the origin and
and/or wilful infringement. In civil actions, quantity of goods;
the calculation of damages can likewise prove • damages/redress/surrender of profits;
complex. Punitive damages are not available. • publication of judgment;
192 | World Trademark Review Yearbook 2021/2022 www.WorldTrademarkReview.comMEISSER & PARTNERS AG SWITZERLAND
The Unfair Competition Act may allow proceedings
against unfair behaviour, including hindering and
blocking, unnecessary imitation and exploitation of
reputation or creation of a risk of confusion
• destruction of infringing goods; and The Federal Act on the Protection of
• criminal penalties (eg, imprisonment Trademarks and Indications of Source protects
or fine). owners against the use of confusingly similar
marks in connection with similar goods
Specialised courts or services as an identifier of commercial
No specialised trademark courts exist in origin. Other types of use (eg, comparisons
Switzerland, but civil cases are judged by with a competitor’s products, imitations of
the higher cantonal or commercial courts. trade dress or denigration) may be pursued
Decisions of these first-instance courts can be under the Unfair Competition Act, the Design
appealed to the Federal Supreme Court. Protection Act if there is a registered design or
the Copyright Act if the mark qualifies as an
Ownership changes and rights transfers artwork under the act. In practice, these acts
Swiss trademark applications and registrations are often invoked simultaneously.
may be totally or partially assigned (except
geographical marks). The assignment must Online issues
be in writing and usually includes goodwill. Generally, all laws apply in virtual life as
The recordal in the register is not constitutive, they do in real life. The Federal Act on the
but a recorded assignment is effective towards Protection of Trademarks and Indications of
third parties acting in good faith. Source, the Unfair Competition Act and laws
Licences may be recorded in the register, on the protection of moral rights and company
but such recordal is not mandatory (except names typically apply in online trademark
for collective marks). The recordal may be issues. Although trademark infringement
in the interest of the licensee, since the may be established only where a website
licence becomes binding on any rights to the involves similar goods or services, other laws
trademark subsequently acquired. Use by a may apply in case of an inactive site or a site
licensee is attributed to the owner in case a offering dissimilar goods or services. Access
valid licence can be shown. providers are not liable under the pertinent
Security interests in trademarks are IP laws.
possible. While the recordal in the register is The Unfair Competition Act may allow
not constitutive, only recorded rights have proceedings against unfair behaviour,
effect against third parties acting in good faith. including hindering and blocking,
unnecessary imitation and exploitation of
Related rights reputation or creation of a risk of confusion.
Trademark rights can overlap with other In addition, several municipalities (ie,
rights, particularly copyrights, designs, Montana, Lucerne, Frick and St Moritz) have
moral rights (eg, rights in one’s own name), successfully challenged domain names that
rights to a company name and rights included their geographical names before the
under geographical indications and unfair civil courts, based on the Unfair Competition
competition laws. Act and their right to a name.
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Disputes over domain names may also be
decided by a WIPO panel under the Rules of
Procedure for Dispute Resolution Proceedings
for ‘.ch’ and ‘.li’ domain names (‘.li’ being
the TLD for Liechtenstein), which have
been adopted by SWITCH (the ‘.ch’ and ‘.li’
registry). Under Paragraph 24(c) of the rules,
the panellist will grant a cancellation request
if the registration or use of the domain name
constitutes a clear infringement of a right in a
distinctive sign that the claimant owns under
the law of Switzerland or Liechtenstein.
Meisser & Partners AG
Bahnhofstrasse 6
Klosters CH-7250
Switzerland
Tel +41 81 410 23 23
Fax +41 81 410 23 24
Web www.swisstm.com
194 | World Trademark Review Yearbook 2021/2022 www.WorldTrademarkReview.comMEISSER & PARTNERS AG SWITZERLAND
Examination/registration
Representative requires a power Examination for relative grounds for Non-traditional marks registrable?
of attorney when filing? Legalised/ refusal based on earlier rights?
notarised?
No No 3D; colours; sounds; motion marks;
holograms; positions; and others
(provided that they can be graphically
represented).
Unregistered rights Opposition
Protection for unregistered rights? Specific/increased protection for Opposition procedure available?
well-known marks? Term from publication?
Yes Yes Yes; three months.
Removal from register
Can a registration be removed for non- Are proceedings available to remove a Are proceedings available to remove a
use? Term and start date? mark that has become generic? mark that was incorrectly registered?
Yes; five years after expiry of Yes Yes
opposition period/declaration of grant
of protection or final decision.
Enforcement
Specialist IP/trademark court? Punitive damages available? Interim injunctions available? Time
limit?
No No Yes: approximately four months.
Ownership changes Online issues
Is registration mandatory for National anti-cybersquatting National alternative dispute resolution
assignment/licensing documents? provisions? policy (DRP) for local ccTLD available?
No No Yes
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