SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
8.3 Costs of Litigating Infringement Actions The costs of a trade mark or copyright lawsuit include court costs ( Gerichtskosten ), which depend on the value of the matter and usually start at about CHF8,000. The lawyer’s fees for drafting and submitting an infringement claim start at about CHF15,000, depending on the complexity of each case. 9. Defences and Exceptions to Infringement 9.1 Defences to Trade Mark Infringement Swiss trade mark law provides numerous defences against infringement proceedings. The following defences can be considered total bars to liability. • Trade marks only grant the exclusive right to use the mark to identify goods and services (Article 13(1) of the Swiss Trade Mark Protec - tion Act). Consequently, descriptive use can serve as a defence against copyright claims. • Unlike many other jurisdictions, Switzerland provides a right to continue prior use. Under Article 14 of the Swiss Trade Mark Protection Act, the proprietor of a trade mark may not prohibit another person from continuing to use a sign to the same extent as used prior to the filing of the application. Such self-use is not covered by the trade mark protection rights of the owner of the later registered trade mark, but it is strictly limited to the already existing use (including the particular extent of usage). The utilisation of the sign cannot be extended in any kind (such as expanding to additional services or goods, rebranding with the same mark, etc).
sion of the judge pursuant to Article 49 of the Swiss Civil Procedure Code. 8.2 Effect of Registration Although the registration of a trade mark is man - datory to be able to assert claims under trade mark law, the effects of the trade mark regis - tration remain limited. In particular, the entry on Swissreg lacks positive legal effect/force under Swiss law. Information provided in the Swiss trade mark register has no formal publicity, so that the content of the register entry is not deemed to be generally known. In Swiss trade mark law, there is no shifting of the burden of proof in civil court proceedings due to information provided in the trade mark register so that the regular civil procedure rules of evi - dence apply. As a result, the trade mark regis - ter (except for its constitutive effects on trade mark rights) has only informative and practical relevance. The judge does not have to assume the legal validity of the trade mark because of the registration, which is why a trade mark can also be challenged by way of a defence. Copyright registrations do not exist in Switzer - land. Non-use after expiration of the five-year grace period does not affect a trade mark’s valid - ity ipso iure and is not considered by courts in infringement proceedings ex officio. However, after expiration of the grace period, the trade mark becomes vulnerable to invalidity attacks. Invalidity due to non-use can particularly be claimed by third parties as a counterclaim in infringement proceedings.
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