SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
the Nairobi Treaty on the Protection of the Olym - pic Symbol. According to the “territoriality of trade mark rights”, rights to trade marks acquired by their owners in one state are generally neither auto - matically recognised nor protected in another state. Thus, the reputation of a sign abroad is, in principle, of no significance. Nevertheless, Switzerland provides protection for famous for - eign marks that are not yet in use or registered within Switzerland, in accordance with Article 6bis of the Paris Convention and the WIPO Joint Recommendation Concerning Provisions for the Protection of Well-Known Marks, provided that the respective mark is famous within Switzer - land. A trade mark that is well known in Switzer - land within the meaning of the Paris Convention receives trade mark protection as if it had been registered in Switzerland. 2.2 Essential Elements of Trade Mark Protection Generally, all signs that can be represented graphically are potentially capable of acquiring trade mark protection (see 2.1 Types of Trade Marks ). The fundamental requirements for trade mark protection for such signs in Switzerland can be categorised into three stages. • First, the sign must be distinctive from an abstract point of view. This is not the case when consumers will under no circumstance and in relation to any product or service per - ceive the sign as an indication of origin (eg, long texts). Such abstract distinctiveness is assessed by the Swiss Institute for Intellec - tual Property ex officio. • Secondly, Swiss law provides inter alia an absolute ground for refusal for signs that lack specific distinctiveness with regard to the goods and services claimed (signs in
the public domain). Signs are excluded from trade mark protection as part of the public domain if consumers do not perceive them as an indication of the commercial origin of the goods and services claimed, or if the signs must be kept available in the interest of competitors to describe the goods or services or their characteristics. Specific distinctive - ness is assessed by the Swiss Institute for Intellectual Property ex officio. The exclusion can be overcome by signs that have acquired distinctiveness. Acquired distinctiveness can be proved indirectly by proving facts such as significant sales made under a sign over a long period of time or intensive advertising efforts. The most reliable means of proving acquired distinctiveness is, however, by pro - viding a market survey. • Finally, Swiss law provides relative grounds for refusal for trade marks that are likely to cause confusion with older trade marks (prior - ity principle). Relative grounds for refusal are not assessed ex officio by the Swiss Institute for Intellectual Property but must be claimed by the respective right-holders (eg, by oppos - ing the respective younger application). In general, trade marks are protected with their entry into the trade mark register. Unlike in Ger - many, for example, acquired public recogni - tion cannot establish trade mark protection (no “trade mark acquired by use”). In certain indi - vidual cases, however, unregistered signs may enjoy protection, as in the following examples: • through the Paris Convention as a foreign trade name (see 2.1 Types of Trade Marks ); • through the Federal Act against Unfair Com - petition; • as a geographical indication; • as a right to the specific name; or
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