SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
4. Trade Mark Registrations and Applications 4.1 Trade Mark Registration Trade mark rights in Switzerland can only be obtained by registration: use of a sign cannot create trade mark protection. There are no differ - ent standards when registering different marks, including in trade dress registrations (see 2.2 Essential Elements of Trade Mark Protection ). 4.2 Trade Mark Register The (unitary) Swiss trade mark register is publicly available on the website of the Swiss Institute for Intellectual Property (IPI), at www.swissreg.ch. Prior trade marks may constitute relative grounds for refusal (see 2.2 Essential Elements of Trade Mark Protection ). Consequently, a search for prior trade marks is highly recommended before applying to register a mark. The IPI does not examine applications for relative grounds for refusal (older trade marks) ex officio. Should an application be opposed by the appropriator of an older right without prior warning (warning let - ter), the applicant can avoid procedural costs by swift withdrawal of the opposed trade mark. The IPI database is a good starting point when searching for older trade marks, but it only pro - vides an identity search; an additional, profes - sional similarity search is highly recommended. The IPI provides a list of platforms that can be consulted and a list of professionals that can be contacted in order to fulfil the research, and offers certain services in connection with trade mark searches. 4.3 Term of Registration In Switzerland, a trade mark is protected for ten years starting from the date of application, extendable indefinitely, each term for ten years.
Each renewal is subject to the payment of a renewal fee. If the owner fails to pay the renewal fees on time, the IPI usually grants an additional period of six months and charges an additional fee. Renewals can be filed from one year before expiration of the protection until six months after the expiration. If no renewal is filed within this timeframe, the trade mark right is lost irrevoca - bly, and a new application is required to rebuild protection. In exceptional cases only, restitutio in integrum might be granted. Continued use is not a requirement for exten - sion. If a trade mark has not been used for an uninterrupted period of five years, its protection may be challenged on the grounds of non-use before civil courts or the IPI. 4.4 Application Requirements Under Swiss law, a potential trade mark owner must register their trade mark in order to acquire the rights. The main principles of the application procedure can be found in the Swiss Trade Mark Protection Act (Article 28 et seq) and the associ - ated ordinance (Article 8 et seq). In order to register a trade mark, an application must be filed with the IPI. The registration can be carried out by using a form sent by post or email, or by using the electronic registration pro - cess (a discount of CHF100 applies for online applications). The electronic application system guides the applicant through the whole process step by step, and elaborates on how to fill in the sections. The application is then accessible on Swissreg. In general, there are no different standards for different types of trade marks. Exceptions apply to trade marks that have acquired distinctive - ness ( Verkehrsdurchsetzung ). In order to protect such trade marks (usually signs that belong to
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