Trade Marks 2018

Author:Mr Mathis Berger and Martin Rauber
Profession:Nater Dallafior Rechtsanwalte
 
FREE EXCERPT

1 RELEVANT AUTHORITIES AND LEGISLATION

1.1 What is the relevant trade mark authority in your jurisdiction?

The Swiss Federal Institute of Intellectual Property (IPI) is the trade mark office in Switzerland.

1.2 What is the relevant trade mark legislation in your jurisdiction?

The relevant trade mark legislation in Switzerland is as follows:

The Federal Act on the Protection of Trade Marks and Indications of Source (Trade Mark Protection Act, TmPA). The Federal Ordinance on the Protection of Trade Marks and Indications of Source (Trade Mark Protection Act, TmPO). 2 APPLICATION FOR A TRADE MARK

2.1 What can be registered as a trade mark?

Basically, every graphic representation can be registered as a trade mark, for example words, letters, a combination of letters, numerals, graphic images (logos), three-dimensional forms (e.g. Mercedes-Star), slogans (e.g. "Nespresso, what else"), colours or any combination of the aforementioned elements. Moreover, other distinguishing signs such as position marks, musical jingles, moving images or holograms can be registered as trade marks. Since 2017, registered designations of origin and geographical indications may be registered as geographical marks ("Valais raclette" for cheese, as a theoretical example).

2.2 What cannot be registered as a trade mark?

Signs that fall under the absolute grounds for refusal pursuant to Section 2 TmPA cannot be registered (see also question 3.1 below).

2.3 What information is needed to register a trade mark?

The applicant must provide the following information with his application to the IPI:

an application for registration with details of the applicant's (company) name; a graphical representation of the trade mark; a list of goods and services for which protection is claimed; if the applicant wants to claim priority, further information must be provided (see question 2.15 below); and further information in case of a non-traditional trade mark (e.g. colour mark or three-dimensional mark). 2.4 What is the general procedure for trade mark registration?

After receiving the application, the IPI first of all orders the applicant to pay the registration fee. Once paid, the IPI examines the formal requirements and whether absolute grounds for refusal exist. If the IPI finds that the application satisfies the legal requirements, the trade mark is registered, officially published and the owner of the trade mark receives a registration confirmation. Otherwise, the IPI rejects the application (see also question 3.2 below).

2.5 How is a trade mark adequately represented?

A trade mark needs to be unambiguous and objective. If the applicant wants to register a non-traditional (e.g. three-dimensional) trade mark or a colour claim, this has to be noted in the application. Three-dimensional trade marks must be visualised with a drawing or photography. Colour trade marks require an indication of the colour in accordance with the Pantone classification. Moving images are represented by several still images and a description of the movement. No smell-marks are registered in Switzerland.

2.6 How are goods and services described?

Goods and services must be classified pursuant to the Nice Classification system. An applicant using class headings is considered to claim all goods and services that may be assigned to this heading.

2.7 What territories (including dependents, colonies, etc.) are or can be covered by a trade mark in your jurisdiction?

The trade mark is registered for the territory of Switzerland (in accordance with the principle of territoriality).

2.8 Who can own a trade mark in your jurisdiction?

Any natural or legal person can own a trade mark in Switzerland.

2.9 Can a trade mark acquire distinctive character through use?

Yes. The applicant must prove the use of the trade mark in the whole of Switzerland during 10 years before filing the application. This period of use can be shorter if the applicant can instead show extensive use and significant promotional efforts. To prove the acquisition of secondary meaning, the IPI also accepts demoscopic surveys as a means of evidence.

2.10 How long on average does registration take?

Pursuant to the IPI, the registration procedure takes from six working days (for obviously unproblematic applications) up to three months after payment of the registration fee. In fact, proceedings last up to six months. An applicant may apply for an accelerated examination for an additional fee, meaning that the IPI issues a decision on the registration or objection within one month.

2.11 What is the average cost of obtaining a trade mark in your jurisdiction?

The registration fee for a trade mark (for 10 years) amounts to CHF 550 and includes three classes of goods and services. Additional fees of CHF 100 are due for each further class. An accelerated examination costs CHF 400. In addition, agents' or attorneys' fees are to be paid.

2.12 Is there more than one route to obtaining a registration in your jurisdiction?

Yes. Via the Madrid system, an international registered trade mark designating Switzerland as its territory of protection will be recognised as a Swiss trade mark.

2.13 Is a Power of Attorney needed?

As a general rule, a written Power of Attorney is not required. The IPI may, however, request one in individual cases.

2.14 If so, does a Power of Attorney require notarisation and/or legalisation?

No, it does not.

2.15 How is priority claimed?

Priority is claimed in the application or within 30 days after the filing of the trade mark application. The applicant must indicate the country of first registration and the application's filing date and, within six months, file a priority declaration. The IPI may request the filing of a priority document.

2.16 Does your jurisdiction recognise Collective or Certification marks?

Yes, Switzerland does recognise Collective and Certification marks.

3 ABSOLUTE GROUNDS FOR REFUSAL

3.1 What are the absolute grounds for refusal of registration?

Trade mark protection is excluded for (Article 2 TmPA):

signs that are in the public domain, except for trade marks which have acquired a secondary meaning; shapes that constitute the nature of the goods themselves or shapes that are technically necessary; misleading signs; or signs contrary to public policy, morality or applicable law. 3.2 What are the ways to overcome an absolute grounds objection?

The applicant needs to persuade the IPI with arguments and/or evidence that the absolute grounds objection is wrong or that the trade mark has acquired secondary meaning through use (see question 2.9 above). In the case that the objection relates to the goods and services claimed by the applicant, he may decide to restrict or amend the list or to file an appropriate remark. Significant amendments may, however, result in the trade mark's application date being moved.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

The decision of the IPI can be appealed within 30 days.

3.4 What is the route of...

To continue reading

REQUEST YOUR TRIAL