SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
5.6 Amendment in Revocation/Cancellation Proceedings In cancellation proceedings before the IPI, amend - ments are possible insofar as actions can be restricted (eg, to certain goods or services of the opposed trade mark). Extensions are inadmissible but can be brought before the IPI by filing a second invalidity action. Amendments in civil cancellation proceedings are admissible according to the general rules on civil proceedings (Article 226 of the Swiss Civil Procedure Code). 5.7 Combining Revocation/Cancellation and Infringement Cancellation proceedings before the IPI concern only the question of non-use; questions of infringement cannot be brought before the IPI but are exclusively heard by the civil courts. In infringement proceedings, cancellation actions are regularly brought as a counterclaim (defence) by the defendant. It is also possible to bring both infringe - ment claims and cancellation actions against the same defendant before one civil court to be heard together. Such claims are decided simultaneously. 5.8 Measures to Address Fraud Trade marks that were filed fraudulently must be can - celled before an ordinary civil court by means of an action for cancellation; no special rules apply. Fraudulent use of a trade mark, however, is subject to criminal prosecution under Article 62 of the Swiss Trade Mark Protection Act.
Trade mark assignment recordals can be filed directly with the IPI but are not necessary for the validity of assignment (declaratory nature). Requests to record the assignment of Swiss trade mark applications or registrations should: • be made in writing; • identify the parties to the assignment (ie, the assignor and assignee); and • specify the trade mark(s) subject to the transfer of ownership. The assignment request can be made by either the previous trade mark owner or the assignee, and must include an express declaration from the previous own - er stating the transfer of the mark to the assignee, typically by providing an assignment agreement or a declaration of transfer document, as well as other necessary documents such as a power of attorney in the case of a change of representative. Template forms for assignment requests and assignment dec - larations are available on the IPI’s website. Copyright can be assigned both by contract and upon death. No formalities apply, so copyright can be assigned even by conduct. Moral rights, howev - er, remain with the author regardless of contractual agreements; assignments and waivers are excluded. An effective trade mark assignment agreement requires handwritten form. Unlike trade mark assign - ments, copyright assignments do not require any formalities and can be concluded orally or even by conclusive conduct. 6.2 Licensing Requirements or Restrictions A trade mark owner may grant exclusive, non-exclu - sive, sole and perpetual licences, and no formalities such as written form or registration are required. Trade mark licences may be recorded on the regis - ter in Switzerland. As long as an exclusive licence is entered on the register, no other licences will be reg - istered for the same trade marks that are incompatible with the licence. In the case of partial licences, the goods and services and/or territory covered by the licence should be stipulated.
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions
A trade mark application or registration may be fully or partially assigned, with the exception of geographical marks, which must be fully assigned. A partial assign - ment request must fulfil the same requirements as a full assignment. An effective assignment requires writ - ten form. Trade marks are transmissible upon death.
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