TRADEMARKS FILING AND PROSECUTION IN SWITZERLAND
A trademark is defined in Article 1 of the Federal Act on the Protection of Trademarks and Indications of Source as mentioned below:
1- A trademark is a sign capable of distinguishing the goods or services of one undertaking from those of other undertakings.
2- Trademarks may, in particular, be words, letters, numerals, figurative representations, three-dimensional shapes or combinations of such elements with each other or with colours. [1]
Trademark in Switzerland may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Swiss Federal Institute of Intellectual Property |
| Filing principle | First-to-file |
| Nice classification | Yes |
| Paris convention | Yes |
| Madrid system | Yes |
| Multi class system | Yes |
| Documents required for filing a trade mark application | Certified copy of the priority document if claimed, with English translation. |
| Requirements Details for filing | Name and address of the applicant, clear representation of the trademark, list of goods and/or services. |
| Prosecution process | Filing, examination, publication (Opposition period- 3 months), registration, renewal |
| Registration term | 10 years from the date of application |
| Renewal term | 10 years |
Under the “First to File” principle, if any other applicant files application for an identical or similar trademark used for identical or similar goods and services after the first applicant has applied, the later applications will be refused.
Therefore, it is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Switzerland can be conducted for word mark, logo, etc. An official search can be conducted at the records of the Swiss Federal Institute of Intellectual Property for similarity. The official website also encourages you to conduct a similar mark search on their online database to ensure that there is no similar trademark existing on the register which is identical or similar to applicant’s trademark.
It is advisable to conduct comprehensive trademark clearance search in Switzerland to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Switzerland. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. [2]
Filing trademark applications in Switzerland
A person may file multi-class or single class trademark application in Switzerland.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Switzerland
Ordinary trademark applications filed in Switzerland are applications without claiming any priority. Multi class trademark applications may also be filed in Switzerland. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Switzerland /Convention trademark applications Switzerland:
A priority trademark application may be filed in Switzerland. A priority trademark application should be filed in Switzerland within 6 months after the date on which the application was made in the convention country.
Paris convention
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Switzerland within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and servicesSwitzerland follows the nice classification of classes. Intellectual property office of Switzerland uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark Examination in Switzerland [3]
Under formal examination, an application is checked to see whether it fulfils the necessary procedural and formal requirements.
If the application is considered complete, applicant will receive a certificate of filing date and the application number.
The Swiss Federal Institute of Intellectual Property will conduct a formal and substantive examination. Thereby, the IPI will examine the application with respect to absolute or relative grounds for refusal.
The applications are examined generally within 3 months after payment of the filing fee and any class surcharges. Within this time limit, we will either confirm that your trade mark is to be accepted for registration in the trade mark register or inform you of any deficiencies which you can subsequently remedy within a given time limit.
It is possible to request an expedited examination. The guarantees that your trade mark will be registered or an objection letter will be sent within one month and that the remaining procedural steps will completed within 2 months.
Trademark Publication in SwitzerlandOnce the examination process is completed and there is no ground for refusal, then the captioned application will be published on the official gazette for the period of three months.
Trademark registration in SwitzerlandAfter the examination process is completed and the mark is accepted for registration, the mark will be registered for a period of 10 years from date of application and the registration certificate is issued.
Trademark Opposition in Switzerland
An opposition in Switzerland may be filed by owners of a prior Swiss national application/ registration, prior international registration designating Switzerland, and/or well-known trade marks.
Against a Swiss national trade mark application, the opposition deadline is 3 months from the date of publication, while for an international registration designating Switzerland, the opposition deadline is the first day of the month following the month of publication in WIPO’s Gazette.
Thereafter, the Applicant is required to file the response to the opposition within a period of two months, and two extensions of two months each can be sought[4].
The Opponent is thereafter required to file a reply to the Applicant’s response, and the Applicant may file a rejoinder to the same. The deadline for both is two months, and two extensions of two months each can be sought. Once the pleadings are completed, the Swiss Institute will render its decision, and compensation is awarded to the prevailing party[2]. An appeal may be filed before the Swiss Federal Administrative Court within 30 days.
Trademark use in Switzerland
Trademark once registered shall be used at least within five years after registration (known as the grace period), otherwise the applicant can lose the rights. If someone registered a similar or identical trademark before you did, they can oppose the use of your trade mark. [5]
- Filing an objection
- Bringing a claim before a civil court
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.
The overview of the tradmark registraton proceudre in Switzerland can be accessed from the below mentioned link:
[1]https://ige.ch/en/protecting-your-ip/trade-marks/national-applications
[2]https://www.ige.ch/en/intellectual-property/guide/trade-marks
[3]https://www.ige.ch/en/intellectual-property/guide/trade-marks/search-first
[4]https://www.ige.ch/en/intellectual-property/guide/trade-marks/grounds-for-refusal
[5]https://www.ige.ch/en/protecting-your-ip/trade-marks/after-registration