SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
as related ordinance law) regulate the civil procedure with respect to IP disputes selectively with regard to certain issues, such as: • the admissible types of action (ie, the declaratory action, the action for performance and the action for assignment of a trade mark); • the shifting of the burden of proof in the case of indications of origin; • the right of associations and consumer organisa - tions to file suit; • the confiscation and destruction of objects in civil proceedings; • the initiation of precautionary measures; and • the publication of civil court judgments. While Switzerland provides a Federal Patents Court that exclusively handles patent disputes as a first instance, trade mark and copyright disputes are han - dled by the respective cantonal courts, usually the cantonal commercial courts, as a first instance. The decision bodies usually consist of three judges: a legal judge presiding and two technical judges. The composition of the chambers can only be influ - enced if members of the court are suspected of bias. If a party fears bias on the part of a court member, it must explicitly request exclusion of the judge pursuant to Article 49 of the Swiss Civil Procedure Code. 8.2 Effect of Registration Although the registration of a trade mark is mandatory to be able to assert claims under trade mark law, the effects of the trade mark registration remain limited. In particular, the entry on Swissreg lacks positive legal effect/force under Swiss law. Information provided in the Swiss trade mark register has no formal publicity, so that the content of the register entry is not deemed to be generally known. In Swiss trade mark law, there is no shifting of the burden of proof in civil court proceedings due to infor - mation provided in the trade mark register so that the regular civil procedure rules of evidence apply. As a result, the trade mark register (except for its constitu - tive effects on trade mark rights) has only informative and practical relevance. The judge does not have to assume the legal validity of the trade mark because
of the registration, which is why a trade mark can also be challenged by way of a defence. Copyright registrations do not exist in Switzerland. Non-use after expiration of the five-year grace period does not affect a trade mark’s validity ipso iure and is not considered by courts in infringement proceedings ex officio. However, after expiration of the grace peri - od, the trade mark becomes vulnerable to invalidity attacks. Invalidity due to non-use can particularly be claimed by third parties as a counterclaim in infringe - ment proceedings. 8.3 Costs of Litigating Infringement Actions The costs of a trade mark or copyright lawsuit include court costs ( Gerichtskosten ), which depend on the value of the matter and usually start at about CHF8,000. The lawyer’s fees for drafting and submit - ting an infringement claim start at about CHF15,000, depending on the complexity of each case. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement Swiss trade mark law provides numerous defences against infringement proceedings. The following defences can be considered total bars to liability. • Trade marks only grant the exclusive right to use the mark to identify goods and services (Article 13 (1) of the Swiss Trade Mark Protection Act). Con - sequently, descriptive use can serve as a defence against copyright claims. • Unlike many other jurisdictions, Switzerland pro - vides a right to continue prior use. Under Article 14 of the Swiss Trade Mark Protection Act, the proprietor of a trade mark may not prohibit another person from continuing to use a sign to the same extent as used prior to the filing of the applica - tion. Such self-use is not covered by the trade mark protection rights of the owner of the later registered trade mark, but it is strictly limited to the already existing use (including the particular extent of usage). The utilisation of the sign cannot be extended in any kind (expanding to additional
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