SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
services or goods, rebranding with the same mark, etc). • Non-use can be used as a counterclaim in infringe - ment proceedings, once the grace period of the mark has expired. • Correspondingly, all absolute grounds for refusal can be invoked as a counterclaim – eg, bad faith registrations. • A licence can justify use. • While there is no fair use defence under Swiss trade mark law, parody/satire can justify trade mark use by invoking human rights such as the freedom of expression and artistic freedom granted by the Swiss Constitution (not yet confirmed by the Swiss Supreme Court). • There is no statutory own-name defence under Swiss trade mark law, but corresponding cases can be subject to the right to continue prior use (see above). 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Swiss law does not provide a general clause that restricts copyright; in particular, there is no excep - tion that permits “fair use”. In contrary, like EU law, for example, the Swiss Copyright Act provides an exhaustive list of specific exceptions (Articles 19–28). Article 11 (3) of the Swiss Copyright Act provides an exception to copyright based on parody and satire, which are defined by case law as humorous expres - sions of opinion based on the original work. There is no general exception to Swiss copyright based on human rights such as the right to free speech, but such general principles are substantiated by the legislature in the exhaustive list of exceptions – eg, in the exceptions for quotation (Article 25 of the Swiss Copyright Act) or reporting on current events (Article 28 of the Swiss Copyright Act). 9.3 Exhaustion A trade mark is a means of distinction and is not intended to secure distribution systems. A trade mark right is therefore deemed to have been exhausted as soon as the specific marked product has been placed on the market with the consent of the trade mark owner. Exhaustion is not stipulated by law but
is recognised by jurisdiction. According to case law, the principle of international (worldwide) exhaustion applies to trade mark law. The principle of international exhaustion applies to copyright as well, as stipulated by Article 12 (1) of the Swiss Copyright Act. As in trade mark law, the copy - right in a specific (physical) work copy is exhausted when it is placed on the market with the consent of the rights-holder. Article 12 (2) of the Swiss Copyright Act specifically confirms this principle for physical copies of computer programs. The question of digital exhaustion is unre - solved in Switzerland and not explicitly stipulated by statute. While digital exhaustion has been confirmed by a lower court in accordance with the CJEU juris - diction UsedSoft (C-128/11), the decision has not been confirmed by the Swiss Federal Supreme Court. However, the legal literature holds that the Zug deci - sion indicates conformity between Swiss and EU law regarding digital exhaustion. Under Swiss copyright and trade mark law, several forms of injunctive relief besides the “usual” perma - nent injunctions are available. Preliminary Injunctions A trade mark may be enforced through a preliminary injunction. To grant a preliminary injunction, the party is required to prove that: • the claim of the requesting party has occurred or is imminent; • the infringement threatens to cause a prejudice that cannot be easily remedied; • there is some urgency; and • the party requesting the preliminary injunction has sufficient interest in legal protection. Ex Parte Preliminary injunctions See 10.4 Ex Parte Relief . In cases of special urgency, the court may issue injunctions immediately without 10. Remedies 10.1 Injunctive Remedies
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