1. Principles of trademark law
Trademark protection in Switzerland is based on registration. Trademarks must be registered in the Swiss Federal Institute of Intellectual Property (IPI) located in Bern.
Under the Madrid Agreement or the Madrid Protocol, Swiss trademark protection may be extended to other contracting countries of the Madrid system. Only applications for international registration under the Madrid system may be filed at the Swiss Federal Institute of Intellectual Property. Direct applications or regional filings must be made to the office in the relevant location.
As Switzerland is not a member of the European Community, the community trademark as well as other regional trademarks cannot be registered in the Swiss Federal Institute of Intellectual Property. Hence, the Trademark applications must be filed directly with the Office for Harmonisation in the Internal Market (Trademarks and Designs), in Alicante, Spain.
National registration and international registration are interdependent, e.g. international registration is associated with the underlying Swiss trademark for a period of five years. If the Swiss trademark lapses within this period or if its scope of protection is reduced, for example by partial cancellation, this also applies to the international registration. Only after a period of five years does the international registration become independent.
2. Sources of Law
Trademarks and registration procedure are regulated by the Swiss Federal Statute on Trademark Protection (Systematic Registry of Swiss Statutes, SR 232.11), as well by the regulations hereto. Unfair competition is regulated by the Swiss Federal Statute on Unfair competition (SR 241) and by different regulations.
On the international level, Switzerland is member of most international agreements relating to trademark and intellectual property protection like the Paris Convention, the Madrid Agreement, the Madrid Protocol, the Nice Agreement, as well as WIPO and Trips Agreements. The head office of WIPO is situated in Geneva, Switzerland.
3. Types of trademarks
By far the largest proportion of trademark applications relate to individual marks. As the name would indicate, this type of mark is used by an individual company wishing to distinguish its products or services from those of its competitors. The company may furthermore license its mark to business partners, which is generally achieved by means of a written licensing agreement.
A collective mark represents the goods or services of an association of manufacturing, commercial or service companies with the aim of demonstrating their membership of this association. A set of rules defines membership criteria for the association, the applicant also being entitled to use the mark as a member of the group.
A certification mark allows the attribution of certain characteristics (e.g. quality features) to the goods or services so marked. The trademark proprietor guarantees compliance with requirements specified in a set of rules. In order to prevent any conflict of interest, the proprietor cannot himself use the mark nor be commercially associated with the users of the mark.
4. Forms of trademarks
A basic distinction is drawn between two-dimensional, three-dimensional and acoustic trademarks. A sequence of sounds, e.g. a jingle, can be registered as trademark if it can be described graphically, generally by means of musical notes.
To have a three-dimensional shape be admitted as the distinguishing mark, this shape must be shown in a photograph or drawing in such a way that the shape is clearly apparent. A shape mark may be applied to the goods themselves (e.g. the Mercedes star). It is also possible for the goods or packaging to have a three-dimensional shape, provided that the shape is distinctive by virtue of its originality. In negative terms, the shape must neither be technically determined nor constitute the essence of the goods.
Two-dimensional trademarks are the most frequent form. A distinction is drawn here between word marks, device marks and combined marks, which consist of both word and device. This distinction may be of significance when evaluating the risk of confusion. There are also differences in the application formalities, as no figures are required for pure word marks. If colors are claimed, protection is, in principle, restricted to the filed color combination. A word mark application is made in capital letters. Technically speaking, a corporate logo is a combined mark as the wording is combined with a pictorial element in so far as a specific typeface is selected or a device is added. In the case of a device mark, the symbol is sufficient in itself as the device is represented without any textual content.
5. Registration procedure
The application for a trademark must be filed with the IPI who first checks out whether the application is complete. If it is, the IPI opens a file and sends an certificate of application and an invoice for the application fee.
Registration and objection procedures are completed within six month and, provided a payment of an additional fee of CHF 400.— is made, it can even be done within one month trough an accelerated examination procedure.
In the formal and substantive examination procedure, a decision is taken as to the registrability of the trademark applied for. The IPI however does not check whether the trademark applied for already exists, for if this is the case, it will certainly be opposed and subsequently revoked. Thus, a trademark check should be done before filing of the application in the trademark and commercial registers. The IPI will perform such checks if requested as the commercial registry office in Bern will check the commercial company names.
After the formal examination, the IPI will give the applicant the possibility to comment on the decision regarding the registrability of the trademark if it has the opinion, that the trademark is not registrable. During the following exchange of correspondence and based on newly gained information or certain circumstances, the IPI may reverse its decision and admit the trademark. If the trademark is considered as registrable, it will be published in the Swiss Official Commercial Journal (SHAB) and the applicant will be handed a certificate of registration.
If the registrability is denied by the IPI, the decision can be appealed to the Swiss Federal Board of Appeal for Intellectual Property. The Board of Appeal’s decision may be referred to the Swiss Federal Supreme Court, whose decision will be final.
As for the registrability of the trademarks, the following criteria are taken into consideration. Trademarks that must remain available to the general public or to competitors may not be monopolized. Trademarks which are deceptive or contrary to the public order cannot be registered.
Substantive information, i.e. information concerning the composition, quality, type or place of production, the purpose or price of the goods and other information of a purely descriptive nature, cannot receive trademark protection. "Apple" thus cannot be registered for apples or fruit, but there is no problem in registering it for computers. One important principle is that, due to the multilingual nature of Switzerland, the assessment of whether a filed trademark is in the public domain or is of a deceptive nature, is always made on the basis of all national languages. In practice, descriptive trademarks in English are also rejected. It should also be noted that the Swiss national emblems, in particular the Swiss cross and cantonal coats of arms, are registrable only for service marks, but not for trademarks (product and commercial marks).
If a trademark is deceptive in relation to product properties, e.g. origin, composition or quality, it may be deemed either entirely inadmissible for registration or admissible only with an appropriate restriction. The prohibition of deception in relation to origin means that trademarks implying, for example, Swiss origin are protected only for goods produced in Switzerland.
The procedure requires that opposition be submitted to the IPI within three months of publication of a national trademark (opposition form). In the case of international registrations, this period does not begin until the first day of the month following publication. An opposition fee must also be paid within these time limits.
Since trademarks are only ever protected in relation to certain products and services, it is not only a matter of determining whether the trademarks may be confused, but also whether the conflicting products are within the same "area of similarity". Under certain circumstances, the challenged trademark may assert that the challenging trademark has not been used within the past five years.
An appeal against the Institute's opposition decision may be submitted to the Swiss Federal Board of Appeal for Intellectual Property within 30 days. The Board's decision is final.
Action in the courts of general jurisdiction:
The principle applies that the decisions of the IPI are not binding upon the courts of general jurisdiction. A trademark may thus at any time be the subject of civil or criminal proceedings. It may be asserted in such proceedings, as in the opposition procedure, that an existing trademark has been infringed by a more recent trademark. The criteria for evaluating the risk of confusion or the similarity of goods and services are the same.
Obligation of use:
After a five year period of grace, the applicant is obliged to make use of the trademark in relation to the goods and services entered in the register. If the trademark is not used for an uninterrupted period of more than five years, it may be deemed to have become invalid. Invalidity means that the trademark right is cancelled and can no longer be asserted.
6. Related matters - Domain names
Domain names may be filed as trademarks in accordance with the usual rules and principles of trademark examination. Like any other symbol, a domain name may only be protected as a trademark if, overall, there is the requisite degree of identification with the claimed goods and services. Top level domain names such as .COM, .ORG, .NET or .CH are not considered distinctive and are thus not protectable.
Once a domain name has been registered as a trademark, direct use for the Internet is protected, as is any use of the domain name with the claimed goods and services.
The trademark proprietor is protected against any use of an identical or similar domain name for identical or similar goods and services. Allocation of a domain name allows the proprietor to be the sole user of this name worldwide, while trademark protection applies only in the countries designated by the trademark proprietor (principle of territoriality). However, allocation of a domain name does not confer any proprietary right. The proprietor of a domain name must expect third parties to assert legal claims, for example in relation to trademark, name, corporate name or competition law. The organizations that allocate domain names do not generally verify the rights associated with a domain name and, in accordance with their guidelines, decline any responsibility in the event of dispute.
As to the specific problem relating to domain-name grabbing, please refer to the article on this matter on the Interleges–Site dated September 1998.
This article was prepared by Rohner & Partner, attorneys-at-law, a Zurich based law firm dedicated to serving the needs of domestic and international business clients.
The content of this article was designed to provide general information on the subject matter covered. No legal or other professional advise is being rendered. Any liability or loss incurred as a consequence, directly or indirectly from the use or application of the information contained herein, is specifically disclaimed.