SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
A request to register a licence may be filed by either the trade mark owner or the licensee, and should be made in writing, identify the parties subject to the licence, and be accompanied by an express declara - tion by the trade mark owner permitting the licensee to use the trade mark in question. The above also applies to sub-licences. In cases where the trade mark owner submits a recordal request for a sub-licence, additional proof must be provided show - ing that the licensee is entitled to grant sub-licences. Template trade mark licence registration forms are available on the IPI’s website. A copyright owner may grant exclusive, non-exclusive, sole and perpetual licences, and no formalities such as written form or registration are required, although written form is highly recommended for purposes of proof. 6.3 Registration or Recording of an Assignment or Licence It is not mandatory to register a trade mark licence on the Swiss register (“Swissreg”), except for a collective mark, which must be recorded. However, registering a licence may be in the interest of a licensee, as it is not possible to enforce a licence against third parties who have in good faith acquired subsequent rights to the trade mark unless the licence is registered. Copyright licences cannot be registered because copyright is an unregistered right in Switzerland and therefore no copyright register exists. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Defence actions are generally not subject to the stat - ute of limitations (ie, actions for declaratory judgment, injunctions and actions to remedy an existing infringe - ment). The admissibility of such actions can only be prevented by the loss of the legal interest in the civil action – ie, forfeiture.
However, according to current Swiss case law, such forfeiture may not be affirmed easily and usually requires at least five years of inactivity and knowledge of the infringing acts on the side of the entitled person. Furthermore, the party being infringed can counteract the forfeiture of its claims with a warning notice – ie, a cease and desist letter (“C&D letter”). The warn - ing notice interrupts the forfeiture period. Conversely, such notice destroys the good faith of the infringer (at least temporarily). However, with respect to further civil claims such as claims for damages and compensation, the regular statutes of limitation apply; for claims for damages and claims for the handing over of profits, the statute of limitations is three years and starts from knowledge of the damage and the identity of the damaging party. The three-year period begins to run in the event the infringing conduct ceases. As long as the infringer continues to perform infringing acts, the question of limitation does not arise. Furthermore, if the infringer acts criminally and intentionally, a longer statute of limitations applies. 7.2 Legal Claims for Infringement Lawsuits and Their Standards The Swiss legal system provides the following civil law claims for the infringement of copyright and trade mark law: • claim for injunctive relief; • claim to remedy an existing infringement; • claim for damages and compensation; • claim for information (usually to gain knowledge about the scope of infringement or further possible infringers); • claim for confiscation and destruction of infringing objects (and tools to produce such); • declaratory claims (eg, for non-infringement or can - cellation of a trade mark/non-existence of copy - right protection); and • claim for publication of the judgment at the cost of the losing party. Furthermore, with respect to trade mark litigation, the plaintiff may bring an action for the assignment of the trade mark instead of a declaration of nullity of the trade mark registration if the defendant has usurped
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