1. Why register a trademark?
For both commercial and legal reasons, trademarks should be registered. The risk of not registering a trademark is that it allows others to register an identical or similar mark that could impede the ability to use or register the mark in Switzerland. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
No legal requirement to register exists, but rights under the Trademarks Act against infringers are only acquired through registration, except in the case of well-known marks. In the absence of registration, it is not possible to prevent others from using a particular mark and the mark is not protected against others who may want to use it.
3. What is registrable?
Any 搒ign?that can graphically be reproduced and is capable of distinguishing the goods or services of one person from another, e.g., words, names, numbers, devices, certain three-dimensional shapes, colors, sounds, and smells, is registrable.
4. Can a trademark be registered for retail and like services?
Yes. Retail services can be registered. Wholesale services need to be paraphrased as "the bringing together, for the benefit of others, of a variety of goods (excluding the transport thereof), enabling customers to conveniently view and puchase those goods at a wholesaler."
5. How are domain names protected?
Domain names are protected on the basis of registration with the Swiss Domain Names Registrar (SWITCH) and by use on the basis of the Unfair Competition Act and the Civil Code.
6. Should a trademark be searched before filing?
Yes. In Switzerland, there is no official search as to prior marks and, therefore, a prefiling search by the applicant is recommended to establish whether valid rights in a mark can be secured. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney, or by directly contacting a Swiss trademark attorney.
8. What information must be provided before filing?
One black and white print with dimensions 8 x 8 cm for trademarks not in ordinary type is required; if the mark in color, one color print withte same dimensions is required. In the case of electronic filings, one greyscale or black and white print in jpeg format (maximum size: 100 KB; maximum resolution: 300 dpi) is required for trademarks not in ordinary type; if colors are claimed, one color print in jpeg format.An applicant must also state the country and date of an application from which priority is claimed. A power of attorney is not required.
9. Is local registration the only option, or are there international alternatives?
A Swiss application only has effect in Switzerland. International registrations are also available (see Guide on the Madrid Agreement and Protocol).
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
No. It is only necessary to file one application and pay extra class fees.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within the six months preceding a Swiss application, the filing date of the home application can be claimed as the filing date in Switzerland (so-called 損riority claim?. A certified copy of the home or priority application needs to be filed within six months of the filing date. A translation is required if the priority document is not in English, German, French or Italian. An international registration can be based on a Swiss registration (see Guide on the Madrid Agreement and Protocol). Similarly, if an applicant抯 home country is a member of the World Trade Organization it should be possible to claim the home filing date. Consult a Swiss trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after the five-year term may cure nonuse, provided that in the interim no third party has filed an action for cancellation for nonuse. Use of a similar mark may count as use of the registered mark. Use of the identical trademark registered for identical goods and services in both Switzerland and Germany by a Swiss or German national, resident, or legal entity in Germany is deemed equivalent to use in Switzerland and vice versa by virtue of a bilateral treaty between the two countries.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of the different form would not affect the enforceability of the applicant抯 registration. However, if the difference is significant, a new application may be necessary, because it is not possible to amend a registration. A Swiss trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
Yes. If an unregistered mark has been continuously used in Switzerland, it may continue to be used on the same scale, even if a third party later obtains registration of an identical mark for identical goods/services. Once the unregistered mark is registered, it is possible to apply for cancellation of any conflicting registrations first used, or applied for, after the date of the first use. If the unregistered mark is not sufficiently distinctive to be registrable, it may acquire the necessary distinctiveness through use, but the use must be in Switzerland.
15. For an application to be valid, are there any particular requirements that must be met?
No.
16. What information is first published about an application/ registration and when is it published?
Information on unpublished applications can be obtained against payment of a fee from the Swiss Patent and Trademark Office; unpublished applications are also searchable by commercial searching agencies. After acceptance a trademark registration is published in the Swiss Commercial Gazette.
17. What kind of examination (if any) will a new application undergo?
An application is examined to determine if the mark complies with local rules as to distinctiveness and deceptiveness. There is no examination as to earlier conflicting rights, unless the mark is opposed. Upon request, official searches are conducted.
18. What response to official objections is required?
Official objections need to be answered within two months with the possibility of obtaining three time extensions of two months each. The applicant must either amend the application to meet the objections or persuade the examiner that the objections are unfounded. The applicant might also have to provide evidence that the mark has acquired distinctiveness through use in Switzerland and/or limit the goods or services of the application. Evidence of registration in a country with a similar practice to that of Switzerland can be submitted to overcome an objection and must be taken into account by the Patent and Trademark Office.
19. How long is the registration process?
If a trademark meets no objections it can be registered within 4-6 months.
20. What rights does an application confer?
Rights effectively stem from the application date, but legal action may only be instituted after registration. Neither pending applications nor registrations are officially cited against a later application. However, pending applications can be used in opposition proceedings.
21. What is the legal effect of a registration?
The registrant has the exclusive right to use the mark in relation to the registered goods/services. The registrant can also prevent others from using the mark or similar marks in relation to the registered or similar goods/services, where it is likely that confusion would arise. The registrant can obtain compensation based on the loss suffered as a result of infringement or on the infringer抯 profits, as well as removal of infringing marks or destruction of products on which such marks appear. It is also possible to prevent others from using conflicting trade names, including shop signs, in the course of trade and to seek assistance from the customs authorities to withhold goods bearing counterfeit or infringing trademarks.
22. Can an application be opposed or cancelled by third parties?
Yes. An application can be opposed within the three months following publication of its registration, by anyone having a registration or an application claiming an earlier date. Owners of unregistered, well-known marks also can file oppositions.
23. Can an application or registration be assigned?
Yes. Registered marks and pending applications may be assigned for all or part of the goods/services covered.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
There is no legal requirement for recordation, but trademark rights cannot be exercised against third parties without it. A deed of assignment, which can be in English, needs to be filed. No legalization is required.
26. Can an application or registration be licensed?
Yes. A license can be exclusive or nonexclusive, with or without limit of term, for all or some of the registered goods/services, or for all or part of Switzerland. The registrant may exercise quality control over licensees, but this is not mandatory. Consult a Swiss trademark attorney.
27. Does a license have to be recorded?
No. But recordation is advisable because an assignee of a registered trademark is not bound by unrecorded licenses. A copy of the license or a declaration to this effect signed by the registrant or licensee needs to be filed.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Switzerland.
29. How long does a registration last?
The term of registration is ten years from the application date, and is renewable in ten-year periods. Renewal can only be requested within the 12 months preceding the renewal date. Late renewal within a six-month period following the renewal date is also possible on payment of a surcharge
30. What is required to renew a registration?
Payment of the renewal fee is required; no power of attorney form is required if the attorney of record is used to renew the registration. As of the beginning of 2005, trademark registrations can be renewed on payment of the prescribed fee by using the pay-in slip sent by the Swiss PTO without having to submit a renewal application form.
31. Is it necessary to indicate a trademark registration on goods or services?
Marking is optional. Although ? 揟M,?揝M,?揺ingetragene Marke,?搈arque d閜os閑?and 搈arca registrata?have no legal effect, marking can counter possible accusations that the mark has become generic and that its registration is, therefore, invalid.
32. Does the International Classification System apply?
The 8th edition of the Nice classification applies. In general, it is possible to file an application using the class headings.
33. Is your national office accessible online?
Yes at www.ige.ch. Registered trademarks can be searched online at www.swissreg.ch. |
