SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
6.3 Registration or Recording of an Assignment or Licence It is not mandatory to register a trade mark licence on the Swiss register (“Swissreg”), except for a collective mark, which must be recorded. However, registering a licence may be in the interest of a licensee, as it is not possible to enforce a licence against third parties who have in good faith acquired subsequent rights to the trade mark unless the licence is registered. Copyright licences cannot be registered because copyright is an unregistered right in Switzerland and therefore no copyright register exists. 7. Initiating Trade Mark and Copyright Lawsuits 7.1 Timeframes for Filing Infringement Lawsuits Defence actions are generally not subject to the statute of limitations (ie, actions for declaratory judgment, injunctions and actions to remedy an existing infringement). The admissibility of such actions can only be prevented by the loss of the legal interest in the civil action – ie, forfeiture. However, according to current Swiss case law, such forfeiture may not be affirmed easily and usually requires at least five years of inactivity and knowledge of the infringing acts on the side of the entitled person. Furthermore, the party being infringed can counteract the forfeiture of its claims with a warning notice – ie, a cease and desist letter (“C&D letter”). The warning notice interrupts the forfeiture period. Conversely, such notice destroys the good faith of the infringer (at least temporarily). However, with respect to further civil claims such as claims for damages and compensation, the
regular statutes of limitation apply; for claims for damages and claims for the handing over of profits, the statute of limitations is three years and starts from knowledge of the damage and the identity of the damaging party. The three- year period begins to run in the event the infring - ing conduct ceases. As long as the infringer continues to perform infringing acts, the ques - tion of limitation does not arise. Furthermore, if the infringer acts criminally and intentionally, a longer statute of limitations applies. 7.2 Legal Claims for Infringement Lawsuits and Their Standards The Swiss legal system provides the following civil law claims for the infringement of copyright and trade mark law: • claim for injunctive relief; • claim to remedy an existing infringement; • claim for damages and compensation; • claim for information (usually to gain knowl - edge about the scope of infringement or further possible infringers); • claim for confiscation and destruction of infringing objects (and tools to produce such); • declaratory claims (eg, for non-infringement or cancellation of a trade mark/non-existence of copyright protection); and • claim for publication of the judgment at the cost of the losing party. Furthermore, with respect to trade mark litiga - tion, the plaintiff may bring an action for the assignment of the trade mark instead of a dec - laration of nullity of the trade mark registration if the defendant has usurped the trade mark. This right, however, shall lapse two years after pub - lication of the registration or after withdrawal of the proprietor’s consent, under Article 4 of the Swiss Trade Mark Protection Act.
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