SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
6. Assignments and Licensing 6.1 Assignment Requirements and Restrictions A trade mark application or registration may be fully or partially assigned, with the excep - tion of geographical marks, which must be fully assigned. A partial assignment request must ful - fil the same requirements as a full assignment. An effective assignment requires written form. Trade marks are transmissible upon death. Trade mark assignment recordals can be filed directly with the IPI but are not necessary for the validity of assignment (declaratory nature). Requests to record the assignment of Swiss trade mark applications or registrations should be made in writing, identify the parties to the assignment (ie, the assignor and assignee) and specify the trade mark(s) subject to the transfer of ownership. The assignment request can be made by either the previous trade mark owner or the assignee, and must include an express declaration from the previous owner stating the transfer of the mark to the assignee, typically by providing an assignment agreement or a dec - laration of transfer document, as well as other necessary documents such as a power of attor - ney in the case of a change of representative. Template forms for assignment requests and assignment declarations are available on the IPI’s website. Copyright can be assigned both by contract and upon death. No formalities apply, so copyright can be assigned even by conduct. Moral rights, however, remain with the author regardless of contractual agreements; assignments and waiv - ers are excluded.
6.2 Licensing Requirements or Restrictions
A trade mark owner may grant exclusive, non- exclusive, sole and perpetual licences, and no formalities such as written form or registration are required. Trade mark licences may be registered on the register in Switzerland. As long as an exclu - sive licence is entered on the register, no other licences will be registered for the same trade mark(s) that are incompatible with the licence. In the case of partial licences, the goods and services and/or territory covered by the licence should be stipulated. A request to register a licence may be filed by either the trade mark owner or the licensee, and should be made in writing, identify the parties subject to the licence, and be accompanied by an express declaration by the trade mark owner permitting the licensee to use the trade mark in question. The above also applies to sub-licences. In cases where the trade mark owner submits a recordal request for a sub-licence, additional proof must be provided showing that the licensee is entitled to grant sub-licences. Template trade mark licence registration forms are available on the IPI’s website. A copyright owner may grant exclusive, non- exclusive, sole and perpetual licences, and no formalities such as written form or registration are required, although written form is highly rec - ommended for purposes of proof.
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