SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
7.8 Effect of Trade Mark and Copyright Office Decisions The IPI has certain competencies in the field of admin - istrative law. It conducts the trade mark registration examination process and, provided proceedings are initiated, co-ordinates and decides oppositions that may be filed by earlier trade mark right-holders and cancellation proceedings based on alleged non-use. IPI proceedings are purely administrative. The pro - ceedings are concluded by a decision of the IPI (ie, approval or rejection), but the judgment has no sub - stantive legal force. Accordingly, in the event of a rejec - tion of the IPI following the opposition proceedings, for example, the opposing party still has the option of initiating regular court proceedings before a civil court. If the opposition is upheld by the IPI, the other party has the option to sue for negative declaratory judgment in civil court proceedings. Hence, the final decision on the admissibility of a trade mark ultimately rests with the competent civil court. Moreover, even during ongoing opposition proceed - ings before the IPI, there is always the possibility, from the point of view of both parties involved, to initiate parallel proceedings before a competent civil court. In this case, the opposition proceedings before the IPI must be suspended accordingly and the decision from the civil court proceedings must be awaited. 7.9 Counterfeiting and Bootlegging Since counterfeits have enormous potential to cause damages to owners of IP, Swiss trade mark and copy - right laws explicitly prohibit any manufacture and/or sale of counterfeits. The Swiss Trade Mark Protection Act prohibits not only the unauthorised imitation of protected products (by trade mark law) and the trade of these counterfeits, but also their import, export or transit through Switzerland. The Swiss Customs Administration has been given the appropriate powers to enforce these regulations. If Customs finds counterfeit goods in tourists’ luggage, for example, or in parcels sent by the post office, Cus - toms is entitled to detain and destroy such goods. The Swiss Customs Administration will also inform the right-holder following such event (eg, the owner of the trade mark). The right-holder then has the possibility
to take civil action against any person who tried to bring a counterfeit of such goods into Switzerland, based on trade mark law, including private individuals. If Customs discovers large consignments where there is a suspicion that someone intended to import coun - terfeits on a commercial basis, the state must take action ex officio – ie, without a request from the right- holder. In such cases, a prison sentence of up to five years or a fine of approximately CHF1 million may be imposed. Swiss trade mark and copyright laws specifical - ly include several provisions concerning criminal offences in connection with the use of trade marks or copyright-protected works. For example, upon the complaint of an injured party, any person who wilfully infringes the trade mark right of another is liable to a custodial sentence not exceeding one year or a mon - etary penalty if they: • appropriate, counterfeit or imitate the trade mark of the other person; or • place goods on the market or provide services, or offer, import, export, carry in transit, store for the purpose of placing on the market, or advertise such goods or services, under the appropriated, counterfeited or imitated trade mark. Copyright and trade mark infringements for com - mercial gain are subject to much higher penalties, up to a maximum of five years’ imprisonment or a fine. Infringements committed by private individuals are exempt from trade mark offences, but copyright offences do apply. 8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no jury decisions within court proceed - ings or any other administrative law-based proceed - ings. In principle, court proceedings with respect to IP disputes follow the same rules and principles as regular civil procedure law. However, the Swiss Trade Mark Protection Act and the Copyright Act (as well
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