SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
the publication of the registration, stating the legal grounds for the opposition. An extension of the time limit for filing an opposition is not permissible. Within the same period, the opponent must pay the opposi - tion fee of CHF800. In the case of an international registration designating Switzerland, the opposition period begins on the first day of the month following the month of publication in the IR register. In addition to an earlier registered trade mark, oppo - sitions can be based on well-known trade marks as earlier rights. Furthermore, the owner of a filed – but not yet registered – trade mark is authorised to file an opposition. Hence, owners of unregistered trade marks (in Switzerland) are entitled to file an opposi - tion against a later trade mark, provided that the trade mark either qualifies as a notorious or well-known trade mark in Switzerland or has at least been applied for with the IPI. Unlike EU trade mark law, Switzerland does not pro - vide a statutory cooling-off period, but the parties can mutually apply for a suspension of proceedings, which is regularly granted by the IPI for an unlimited period of time. Any person may file a request for cancellation of the trade mark with the IPI on the grounds of non-use of the trade mark, at any time. Such request may be filed at the earliest within five years following the expiry of the opposition period, or, in the event of opposi - tion proceedings, five years after the conclusion of opposition proceedings. Other statutory limitations or time periods (eg, for certain arguments or grounds for refusal) do not apply. Copyright is an unregistered right in Switzerland, so no opposition or cancellation proceedings apply. The non-existence of copyright protection for a particu - lar subject matter can, under certain circumstances, be established by means of an action for a negative declaratory judgment before the civil courts. 5.2 Legal Grounds for Filing an Opposition or Cancellation According to Article 3 of the Swiss Trade Mark Protec - tion Act, the legal grounds for filing an opposition are
that the earlier trade mark is excluded from trade mark protection due to relative grounds for refusal. In particular, grounds for filing an opposition are that: • the later sign is identical to an earlier trade mark and is intended for the same goods or services as the earlier trade mark; • the sign is identical to an earlier trade mark and is intended for similar goods or services, so that there is a likelihood of confusion; or • the sign is similar to an earlier trade mark and is intended for the same or similar goods or services, so that there is a likelihood of confusion. Dilution or exploitation of reputation cannot be claimed in opposition proceedings, but only in a civil action before the regular courts. Revocation or cancellation proceedings before the IPI – which are administrative in nature – are (only) avail - able due to non-use of the respective trade mark. Fur - ther cancellation reasons (particularly all the above- mentioned absolute and relative grounds for refusal) have to be examined through civil court proceedings (or through opposition proceedings in the case of rela - tive grounds for refusal). The decisions of the IPI may be appealed to the Federal Administrative Court and subsequently to the Federal Supreme Court. However, the Federal Administrative Court is the court of last instance for decisions in opposition proceedings: an appeal to the For the initiation of opposition proceedings (and court proceedings), there is, in principle, no manda - tory requirement to be represented by an attorney in Switzerland. However, it follows from the procedural rules under trade mark law that the applicant must at least have an address for service in Switzerland, and mandated attorneys in Switzerland ensure such. For the material requirements to initiate such proceedings, see 5.2 Legal Grounds for Filing an Opposition or Cancellation . Swiss Supreme Court is excluded by law. 5.3 Ability to File an Opposition or Revocation/Cancellation
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