FAQ

Why Trademark Protection? Choice of sign Trademark Application Legal Conditions of Registration Beginning and End of Protection Territory of Protection Use of Trademark Defence of Trademark Warning Letter

Why Trademark Protection?

What is the benefit of a trademark?
Trademarks may be offensively used your trademark offensively by prosecuting third parties using an identical or similar mark. With regard to a defensive use, the trademark registration provides protection against third parties who intend to dispute the use of a mark or name.

Doesn't the right to a name or company name provide enough protection?
The big advantage of a trademark is that, as a rule, its geographical designation outreaches the designations of a name or company name respectively. For a trademark you may easily obtain international protection by registration, if necessary worldwide.


Choice of sign

Which signs may serve as marks?
Possible manifestations are words, letters, figures, graphical representations, three-dimensional marks (Toblerone®-package, Mercedes®-star), acoustical signs, and identification threads of textiles, abstract colours as well as slogans and combinations of any of the above.

May foreign-language signs be chosen?
Basically yes. German, French, Italian or English terms, which merely translate or praise (e.g. "Masterpiece") the claimed goods or services however may not be registered.

May colours be included into the protection?
Basically for each sign you may assert a claim for a specific colour. However, colours as such (the orange colour of Ovomaltine®) may only be registered exceptionally, that is when the sign has been used as trademark for a long time and therefore has become accepted in the market.

Which signs are excluded from registration?
Signs offensive to the public order (e.g. swastika), deceptive signs ("Tango Kashmir" for synthesised clothing), advertising signs ("SUPER") are non-registrable as well as signs in the public domain, as far as such signs have not become accepted in the market due to their long-term use.

Can a sign belonging to the public domain be registered?
As far as the sign chosen belongs to the public domain as a term, it may be possibly registered due to its graphic design. However, in this case no protection will be obtained against the use of the sign in the public domain by a third party using a different design.


Trademark Application

Where and how does a trademark application need to be filed?
In order to register a trademark, an application, the mark itself and a list of the represented goods and services must be submitted to the Swiss Federal Institute of Intellectual Property. The application may be filed either by using the official form or by e-mail over the internet (e-trademark).

What are the official fees for the trademark application?
The fees depend on the number of classes of goods and services claimed for and lie between CHF 350 (basic fee including three classes) and CHF 5'000 (including all 45 classes).

How long does the registration procedure take?
At present the period of a trademark registration is at an average between 3 and 6 months. Against payment of an additional fee of CHF 400 the Swiss Federal Institute of Intellectual Property executes an accelerated procedure.


Legal Conditions of Registration

What are the legal conditions of the registration?
The chosen sign may not directly describe or advertise the goods and services it represents. The sign has to be actually recognised by the consumers as mean of distinction. It may not be deceptive, offend the public order or hurt the feelings of belief or decency.

Can service marks be registered?
Yes. Both, trademarks (for goods) and service marks (for services) are registrable.

Do the goods and/or services, for which the mark shall be protected, need to be specified?
The goods and/or services need to be described as precisely as possible and classified in one of the 45 existing classes for goods and services respectively.


Beginning and End of Protection

From when on do marks enjoy protection?
The trademark protection begins with its registration in the trademark register as from the date of its filing retroactively. Upon registration you may claim priority for your own trademark and proceed against trademark applications which where filed after the deposit of your own mark.

How long will the period of the trademark protection last?
The period of protection is ten years from the deposit of the trademark. This period may be prolonged every ten years for another ten years.

What are the reasons for a termination of the trademark protection?
The mark may be deregistered upon request of the trademark owner or be declared null and void by the competent court. A mark owner may also oppose against the later registration of a similar or identical mark in order to try to cause the cancellation of the disputed mark.


Territory of Protection

Where does the registered Swiss trademark enjoy protection?
A Swiss trademark enjoys uniform protection in whole Switzerland. There are no cantonal, but only one federal trademark register.

Can you extend the national trademark protection internationally?
Based on a Swiss trademark registration, you may request an extension of protection at the Swiss Federal Institute of Intellectual Property. This extension which will be forwarded to the "World Intellectual Property Organization (WIPO or OMPI)". The WIPO informs the designated countries about the request for extension. For the applicant of the Swiss trademark, the Institute in Berne remains the contact organisation.

Which countries may be designated in the extension?
The most important countries may be designated within the scope of an international trademark extension. Almost all OECD countries are selectable. Exceptions are especially Canada, Brazil, Hong Kong, Republic of South Africa and Taiwan.

Is the registration of a Community Trademark (CTM) possible for Swiss citizens?
Yes. A CTM may be deposited at the Office for Harmonization in the Internal Market ("OHIM" or "OAMI") in Alicante, Spain.


Use of Trademark

Is the use of a trademark mandatory?
During a period of five years from its registration, the trademark does not have to be used, without losing its protection. Should the disuse of the trademark continue after said period, third parties may dispute the disused mark.

Does the non-registrability of a mark mean an interdiction to use the sign?
A sign, which belongs to the public domain and therefore cannot be registered, may be used by everyone. Also deceptive signs may be used in the market, as long as this use does not constitute an unfair competition. Indecent signs may be used as far as they do not infringe provisions subject to public law and especially criminal law.

What does the symbol ® mean?
The ® (Circle-R) is a warning notice to advice the public that the mark is registered and its use provides legal benefits. This notice can be used only with registered marks.

What does the symbol "TM" mean?
A ™ is used to indicate an unregistered trademark. It is an informal notification that there is a public claim as a trademark. The notification is no statement concerning a possible registration.


Defence of Trademark

Which rights does a trademark owner have?
The trademark owner has the exclusive right to use his mark in business and advertising for the goods or services it represents.

What can you do against trademark infringement?
Should a third party apply for the registration of a similar or identical mark, the owner of the older mark may oppose, within a period of three month from the official publication of the infringing mark, against the registration of the similar or identical mark and request its deregistration. For other trademark infringements the owner of a trademark needs to institute regular civil proceedings at the court competent for the individual case.

Can a third party register my mark as a domain name?
The trademark law basically also offers protection from third parties using my trademark as a domain name. As owner of the trademark "Whoops", which is registered for ties, I do not have to accept that a third party offers and sells shoes under www.whoops.ch.

What is a warning letter (notice)?
A warning letter in writing serves the purpose of alerting the infringer of an industrial property right (patent, trademark, design, copyright) concerning the unlawfulness of his behaviour. Upon receipt of the warning letter any future infringements are commited culpably as the warned infringer acts in bad faith, which again may lead to a liability for damages as from the notice of infringement. The warning letter needs to describe exactly which industrial property right is infringed by which acts of the infringer. Should the owner of the industrial property right know that his right (copyright, trademark, patent, design) is void by law or should he have serious doubts concerning its validity, a warning letter may cause a violation of competition law and claims for compensation of damages. In Switzerland a warning letter is no precondition for the filing of a lawsuit based on infringement. However, should the defendant acknowledge the prosecuted claim concerning infringement immediately after the judicial assertion, the plaintiff as a rule bears the costs of litigation. In order to lower the legal risks, warning letters are normally prepared by specialised law firms.