SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
4.3 Term of Registration In Switzerland, a trade mark is protected for ten years starting from the date of application, extendable indef - initely, each term for ten years. Each renewal is sub - ject to the payment of a renewal fee. If the owner fails to pay the renewal fees on time, the IPI usually grants an additional period of six months and charges an additional fee. Renewals can be filed from one year before expiration of the protection until six months after the expiration. If no renewal is filed within this timeframe, the trade mark right is lost irrevocably, and a new application is required to rebuild protection. In exceptional cases only, restitutio in integrum might be granted. Continued use is not a requirement for extension. If a trade mark has not been used for an uninterrupted period of five years, its protection may be challenged on the grounds of non-use before civil courts or the IPI. 4.4 Application Requirements Under Swiss law, a potential trade mark owner must register their trade mark in order to acquire the rights. The main principles of the application procedure can be found in the Swiss Trade Mark Protection Act (Arti - cle 28 et seq) and the associated ordinance (Article 8 et seq). In order to register a trade mark, an application must be filed with the IPI. The registration can be carried out by using a form sent by post or email, or by using the electronic registration process (a discount of CHF100 applies for online applications). The electronic appli - cation system guides the applicant through the whole process step by step, and elaborates on how to fill in the sections. The application is then accessible on Swissreg. In general, there are no different standards for different types of trade marks. Exceptions apply to trade marks that have acquired distinctiveness ( Verkehrsdurchset- zung ). In order to protect such trade marks (usually signs that belong to the public domain, which is usu - ally a ground for refusal), it needs to be proven that the sign has been used extensively as a trade mark in Switzerland for several years.
A Swiss trade mark application must include the per - sonal information of the applicant, the mark itself and a list of the goods and services for which the trade mark is intended to be used. Any natural or legal per - son may register a trade mark in Switzerland. Multiple- class applications are admissible. Any applicant that is not domiciled or resident in Switzerland must des - ignate an address for service in Switzerland. In cases where the potential trade mark owner is not based in Switzerland, an address for service in Swit - zerland must be specified. If necessary, the applicant also needs to provide a declaration of priority and, if required, indicate whether the mark is a guaranteed mark or a collective mark. After submitting the appli - cation, it is then examined for admissibility by the IPI. Fees for trade mark applications amount to CHF350 for online applications (otherwise CHF450) for up to three classes (CHF100 for each additional class). A decision regularly takes between three and five months. Expe - dited applications (decision in about four weeks) are available for an additional fee of CHF400. 4.5 Use in Commerce Prior to Registration Use prior to registration is not required under Swiss law. If a trade mark is not used for the goods and services for which it obtained protection, it may be subject to invalidity proceedings before the IPI or the civil courts after the grace period has expired (see 2.4 Use in Commerce ). Invalidity for lack of use may also be raised as a defence in opposition or infringement proceedings. The requirements for establishing genuine use are use of the trade mark in commercial trade, in Switzerland, as an indication of origin in relation to the claimed goods/services. The use must reach an economically meaningful extent (genuine intention of satisfying the markets’ demand). 4.6 Consideration of Prior Rights in Registration The trade mark office does not consider the exist - ence of prior rights in its examination of an application for registration (see 2.2 Essential Elements of Trade Mark Protection ).
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