SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
5.6 Amendment in Revocation/ Cancellation Proceedings
grounds for refusal. If no proceedings are initi - ated, an applied trade mark will generally remain in the Swiss trade mark register. Non-use is not examined ex officio. A trade mark may be cancelled partially in oppo - sition or cancellation proceedings, if grounds for refusal do not concern the whole trade mark (eg, if only certain goods or services are con - cerned). Disclaimers may be amended on the list of goods and services. 5.5 Legal Remedies Against the Decision of the Trade Mark Office Decisions of the IPI following from opposition proceedings can be appealed to the Federal Administrative Court of Switzerland. The Fed - eral Administrative Court then makes a final decision, which precludes any further appeal to the highest Swiss court (the Federal Supreme Court) with respect to decisions in connection with the opposition proceedings. Proceedings at the Federal Administrative Court usually take around nine months. However, the decision on the opposition does not have substantive legal effect ( materielle Rechtskraft ). If the opposition is rejected (or upheld) by the IPI, the other party is always free to file an action before a regular civil court. If a party decides to leave the decision of a trade mark dispute to a civil court during ongo - ing opposition proceedings before the IPI, the opposition proceedings before the IPI must be suspended. Decisions can be appealed immediately after the respective IPI submission has been served.
In cancellation proceedings before the IPI, amendments are possible insofar as actions can be restricted (eg, to certain goods or services of the opposed trade mark). Extensions are inad - missible but can be brought before the IPI by filing a second invalidity action. Amendments in civil cancellation proceedings are admissible according to the general rules on civil proceedings (Article 226 of the Swiss Civil Procedure Code). 5.7 Combining Revocation/Cancellation and Infringement Cancellation proceedings before the IPI con - cern only the question of non-use; questions of infringement cannot be brought before the IPI but are exclusively heard by the civil courts. In infringement proceedings, cancellation actions are regularly brought as a counterclaim (defence) by the defendant. It is also possible to bring both infringement claims and cancellation actions against the same defendant before one civil court to be heard together. Such claims are decided simultaneously. 5.8 Measures to Address Fraud Trade marks that were filed fraudulently must be cancelled before an ordinary civil court by means of an action for cancellation; no special rules apply. Fraudulent use of a trade mark, however, is sub- ject to criminal prosecution under Article 62 of the Swiss Trade Mark Protection Act.
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