SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
the trade mark. This right, however, shall lapse two years after publication of the registration or after with - drawal of the proprietor’s consent, under Article 4 of the Swiss Trade Mark Protection Act. The claims apply equally to direct infringement, con - tributory infringement and vicarious infringement. Unlike most other jurisdictions, trade mark claims can also be brought against private individuals who import infringing goods (eg, fake Gucci bags from a holiday in Thailand). The available claims are the same, regardless of whether the trade mark is registered or unregistered. Trade mark infringement is constituted by: • the existence of a trade mark right (registered or unregistered); • infringing use of the trade mark (conditions are identical to the requirements of relative grounds for refusal, particularly likelihood of confusion); or • unlawful use (no limitations apply; no right to use – eg, no licence). Copyright infringement is constituted by: • the existence of copyright protection (own indi - vidual creation); • infringing use of the protected work (identical or adaptive); • infringement of the author’s moral rights (distor - tion of the work, violation of the author’s right to be named as the author); or • unlawful use (no limitations apply; no right to use – eg, licence). The plaintiff is obliged to present all facts that prove protection and use, while the defendant must pre - sent all facts that justify the use, such as the legal requirements of exceptions and limitations. The bur - den of proof generally lies with the party for whom the respective fact is legally useful or favourable. In the case of well-known marks, Swiss law provides for extended protection by granting claims against use for goods or services for which the well-known mark is not protected, if such use constitutes dilution or
exploitation of reputation (image transfer). The plaintiff must prove Swiss consumers’ widespread awareness of the respective trade mark, which usually requires a market survey, unless such awareness is self-evident to the court. Legal remedies related to copyright management information correspond to Article 12 of the WIPO Copyright Treaty and can be found in Article 39c of the Swiss Copyright Act. Copyright management informa - tion is defined in Article 39c(2) of the Swiss Copyright Act as all “electronic information that identifies works and other subject-matter or information about the terms and conditions of use as well as any numbers or codes that represent such information”. Swiss law prohibits the unauthorised removal of such informa - tion and the use of works after the unlawful removal of such information. 7.3 Factors in Determining Infringement The decisive criterion in determining trade mark infringement is likelihood of confusion (Article 3 (1) of the Swiss Trade Mark Protection Act). Whether such a likelihood exists must be determined by the overall impression based on the criteria of identity/similarity ( Gleichartigkeit ) of the signs and with respect to the goods and services offered. In other words, the more similarity between the goods and services offered, the greater the difference between the marks must be. The calculation also takes into account the target group for the goods and services offered and the effect of the signs within this target group. As a result, the assessment of these criteria is always a matter of discretionary decision-making. The higher the degree of similarity of the older mark, the more likely the court must assume a likelihood of confusion. Trade mark infringement is determined by compar - ing the overall impression of the earlier work and the potentially infringing creation (Articles 10 and 11 of the Swiss Copyright Act). All creations that represent the individual character of the original work fall within the scope of protection and are therefore infringing.
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