SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
8. Litigating Trade Mark and Copyright Claims 8.1 Special Procedural Provisions for Trade Mark or Copyright Proceedings There are no jury decisions within court proceed - ings or any other administrative law-based pro - ceedings. In principle, court proceedings with respect to IP disputes follow the same rules and principles of regular civil procedure law. How - ever, the Swiss Trade Mark Protection Act and the Copyright Act (as well as related ordinance law) regulate the civil procedure with respect to IP disputes selectively with regard to certain issues, such as: • the admissible types of action (ie, the declar - atory action, the action for performance and the action for assignment of a trade mark); • the shifting of the burden of proof in the case of indications of origin; • the right of associations and consumer organisations to file suit; • the confiscation and destruction of objects in civil proceedings; • the initiation of precautionary measures; and • the publication of civil court judgments. While Switzerland provides a Federal Patents Court that exclusively handles patent disputes as a first instance, trade mark and copyright disputes are handled by the respective cantonal courts, usually the cantonal commercial courts, as a first instance. The decision bodies usually consist of three judges: a legal judge presiding and two technical judges. The composition of the chambers can only be influenced if members of the court are suspect - ed of bias. If a party fears bias on the part of a court member, it must explicitly request exclu -
holder following such event (eg, the owner of the trade mark). The right-holder then has the possi - bility to take civil action against any person who tried to bring a counterfeit of such goods into Switzerland, based on trade mark law, including private individuals. If Customs discovers large consignments where there is a suspicion that someone intended to import counterfeits on a commercial basis, the state must take action ex officio – ie, without a request from the right-holder. In such cases, a prison sentence of up to five years or a fine of approximately CHF1 million may be imposed. Swiss trade mark and copyright laws specifically include several provisions concerning criminal offences in connection with the use of trade marks or copyright protected works. For exam - ple, upon the complaint of an injured party, any person who wilfully infringes the trade mark right of another is liable to a custodial sentence not exceeding one year or a monetary penalty if they: • appropriate, counterfeit or imitate the trade mark of the other person; or • place goods on the market or provide ser - vices, or offer, import, export, carry in tran - sit, store for the purpose of placing on the market, or advertise such goods or services under the appropriated, counterfeited or imi - tated trade mark. Copyright and trade mark infringements for commercial gain are subject to much higher penalties, up to a maximum of five years’ impris - onment or a fine. Infringements committed by private individuals are exempt from trade mark offences, but copyright offences do apply.
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