SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
The opposition fee, as defined by the IPI, currently amounts to CHF800. If legal representation is mandat - ed, costs for the respective attorney fees incur sepa - rately. The attorney costs usually vary depending on the complexity of the opposition proceedings. How - ever, with the decision of the IPI on the opposition, the IPI shall determine whether and to what extent the costs of the successful party shall be compensated by the other party. Any natural or legal person may file an application for cancellation of a trade mark on the grounds of non- use. A legal interest is not required to initiate trade mark cancellation proceedings before the IPI. To invoke absolute or relative grounds for refusal in civil proceedings (civil action for annulment), the plaintiff must demonstrate an individual interest. Such interest can be demonstrated by the application for protection or use of a similar trade mark, for example. 5.4 Opposition or Revocation/Cancellation Procedure The opposition proceeding must be initiated in writing within three months. From this point on, the formal opposition is filed with the IPI. The IPI subsequently carries out an examination and, in this context, evalu - ates the identification of the opponent, the register or application number of the relevant trade marks, and the legal scope and grounds of the opposition. In addition, the IPI checks whether the required opposi - tion fee has been paid by the opponent in due time. If all requirements are met, the IPI sets a time limit for the counterparty to submit a written response. The counterparty’s statement is usually not followed by a second exchange of correspondence. The opposition proceedings are exclusively conducted in writing and are terminated at the latest after the second exchange of correspondence by means of a decision of the IPI, resulting in rejection or approval. In summary, it has to be noted that opposition pro - ceedings offer an alternative to regular court proceed - ings and, therefore, allow the owner of an earlier trade mark to enforce its exclusive right towards the appli - cant of a later mark in a relatively simple way. How - ever, this also means that only limited legal grounds can be raised in such opposition proceedings (only
relative grounds for refusal) and they cannot replace regular court proceedings. Cancellation proceedings may be initiated either before the IPI due to non-use of a trade mark or by initiating opposition proceedings within three months after publication in the trade mark register. Alternative - ly, the cancellation of a trade mark requires a final civil court decision holding that a respective trade mark must be cancelled based on legal grounds such as absolute or relative grounds for refusal. If no proceed - ings are initiated, an applied trade mark will generally remain in the Swiss trade mark register. Non-use is not examined ex officio. A trade mark may be cancelled partially in opposition or cancellation proceedings, if grounds for refusal do not concern the whole trade mark (eg, if only certain goods or services are concerned). Disclaimers may be amended on the list of goods and services. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Decisions of the IPI following from opposition pro - ceedings can be appealed to the Federal Administra - tive Court of Switzerland. The Federal Administrative Court then makes a final decision, which precludes any further appeal to the highest Swiss court (the Federal Supreme Court) with respect to decisions in connection with the opposition proceedings. Pro - ceedings at the Federal Administrative Court usually take around nine months. However, the decision on the opposition does not have substantive legal effect ( materielle Rechtskraft ). If the opposition is rejected (or upheld) by the IPI, the other party is always free to file an action before a reg - ular civil court. If a party decides to leave the decision of a trade mark dispute to a civil court during ongoing opposition proceedings before the IPI, the opposition proceedings before the IPI must be suspended. Decisions can be appealed immediately after the respective IPI submission has been served.
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