SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
land (see 2.2 Essential Elements of Trade Mark Protection ). Once registered for protection, Swiss law pro - vides a five-year grace period, during which actual use of the trade mark is not demanded by law. After the expiry of the grace period, the trade mark becomes vulnerable insofar as third par - ties can claim its invalidity due to non-use. Such invalidity can be actively claimed by third parties in civil court proceedings (negative declaratory action), as a counterclaim in infringement pro - ceedings or in office procedures relating to dec - larations of invalidity. Non-use after expiration of the grace period does not affect a trade mark’s validity ipso iure. 2.5 Notices and Symbols Trade mark rights exist regardless of the use of symbols such as ®. However, the use of sym - bols is admissible and does not cause negative legal consequences under Swiss law, unless such use constitutes an act of unfair competi - tion. Misleading advertising would be constitut - ed by using the symbol ® or TM, for example, after trade mark protection has lapsed. 2.6 Related Rights A trade mark can be protected by copyright or related rights – eg, in case of a logo – if the respective sign meets the terms of protection. There is no exclusivity between the different IP rights in Switzerland, but the different regimes of protection are applicable in cumulation. For example, to enjoy protection under copyright law, a logo would need to be an intellectual crea - tion of individual character. Other related rights are rights under name and personality law, com - pany name law and unfair competition law. The rules under unfair competition law are regularly
• through the Federal Act on Copyright and Related Rights. 2.3 Trade Mark Rights The trade mark right provided by Swiss law does not grant a (positive) right to use the mark, but solely a (negative) right to exclude others from using the same or confusingly similar marks in a way that is likely to cause confusion (right of prohibition). The rights are outlined by Articles 13 and 15 of the Swiss Trade Mark Protection Act. Article 13 provides a non-exhaustive enumeration of examples of acts that the trade mark owner is entitled to prohibit, namely: • affixing the sign to goods or their packaging; • offering goods, placing them on the market or storing them for such purposes under the sign; • offering or providing services under the sign; • importing, exporting or carrying in transit goods under the sign; or • using the sign on business papers, in adver - tising, or otherwise in the course of trade. These rights persist throughout the term of pro - tection without restriction. Unlike the majority of other jurisdictions, Swiss trade mark law provides a right of prior use. According to 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 already previ - ously used prior to the filing of the application. 2.4 Use in Commerce Use prior to application or “(declaration of) intent to use”, as seen in the US for example, is not a requirement of trade mark protection in Switzer -
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