SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
Well-Known Marks, provided that the respective mark is famous within Switzerland. A trade mark that is well known in Switzerland within the meaning of the Paris Convention receives trade mark protection as if it had been registered in Switzerland. 2.2 Essential Elements of Trade Mark Protection Generally, all signs that can be represented graphically are potentially capable of acquiring trade mark protec - tion (see 2.1 Types of Trade Marks ). The fundamental requirements for trade mark protection for such signs in Switzerland can be categorised into three stages. • First, the sign must be distinctive from an abstract point of view. This is not the case when consumers will under no circumstance and in relation to any product or service perceive the sign as an indica - tion of origin (eg, long texts). Such abstract dis - tinctiveness is assessed by the Swiss Institute for Intellectual Property ex officio. • Secondly, Swiss law provides inter alia an absolute ground for refusal for signs that lack specific dis - tinctiveness with regard to the goods and services claimed (signs in the public domain). Signs are excluded from trade mark protection as part of the public domain if consumers do not perceive them as an indication of the commercial origin of the goods and services claimed, or if the signs must be kept available in the interest of competitors to describe the goods or services or their character - istics. Specific distinctiveness is assessed by the Swiss Institute for Intellectual Property ex officio. The exclusion can be overcome by signs that have acquired distinctiveness. Acquired distinctiveness can be proved indirectly by proving facts such as significant sales made under a sign over a long period of time or intensive advertising efforts. The most reliable means of proving acquired distinc - tiveness is, however, by providing a market survey. • Finally, Swiss law provides relative grounds for refusal for trade marks that are likely to cause confusion with older trade marks (priority principle). Relative grounds for refusal are not assessed ex officio by the Swiss Institute for Intellectual Prop - erty but must be claimed by the respective right- holders (eg, by opposing the respective younger application).
In general, trade marks are protected through their entry into the trade mark register. Unlike in Germa - ny, for example, acquired public recognition can - not establish trade mark protection (no “trade mark acquired by use”). In certain individual cases, how - ever, unregistered signs may enjoy protection, as in the following examples: • through the Paris Convention as a foreign trade name (see 2.1 Types of Trade Marks ); • through the Federal Act against Unfair Competi - tion; • as a geographical indication; • as a right to the specific name; or • through the Federal Act on Copyright and Related Rights. 2.3 Trade Mark Rights The trade mark right provided by Swiss law does not grant a (positive) right to use the mark, but solely a (negative) right to exclude others from using the same or confusingly similar marks in a way that is likely to cause confusion (right of prohibition). The rights are outlined by Articles 13 and 15 of the Swiss Trade Mark Protection Act. Article 13 provides a non-exhaustive enumeration of examples of acts that the trade mark owner is entitled to prohibit, namely: • affixing the sign to goods or their packaging; • offering goods, placing them on the market or stor - ing them for such purposes under the sign; • offering or providing services under the sign; • importing, exporting or carrying in transit goods under the sign; or • using the sign on business papers, in advertising, or otherwise in the course of trade. These rights persist throughout the term of protection without restriction. Unlike the majority of other jurisdictions, Swiss trade mark law provides a right of prior use. According to Article 14 of the Swiss Trade Mark Protection Act, the proprietor of a trade mark may not prohibit another person from continuing to use a sign to the same extent as already previously used prior to the filing of the application.
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