SWITZERLAND Law and Practice Contributed by: Peter Schramm, Timmy Pielmeier, Michael Ritscher and Andrea Schäffler, MLL Legal
9.3 Exhaustion A trade mark is a means of distinction and is not intended to secure distribution systems. A trade mark right is therefore deemed to have been exhausted as soon as the specific marked product has been placed on the market with the consent of the trade mark owner. Exhaustion is not stipulated by law but is recognised by juris - diction. According to case law, the principle of international (worldwide) exhaustion applies to trade mark law. The principle of international exhaustion applies to copyright as well, as stipulated by Article 12(1) of the Swiss Copyright Act. As in trade mark law, the copyright in a specific (physical) work copy is exhausted when it is placed on the market with the consent of the rights-holder. Article 12(2) of the Swiss Copyright Act specifi - cally confirms this principle for physical copies of computer programs. The question of digital exhaustion is unresolved in Switzerland and not explicitly stipulated by statute. While digi - tal exhaustion has been confirmed by a lower court in accordance with the CJEU jurisdiction UsedSoft (C-128/11), the decision has not been confirmed by the Swiss Federal Supreme Court. However, the legal literature holds that the Zug decision indicates conformity between Swiss and EU law regarding digital exhaustion.
• Non-use can be used as a counterclaim in infringement proceedings, once the grace period of the mark has expired. • Correspondingly, all absolute grounds for refusal can be invoked as a counterclaim – • While there is no fair use defence under Swiss trade mark law, parody/satire can justify trade mark use by invoking human rights such as the freedom of expression and artistic free - dom granted by the Swiss Constitution (not yet confirmed by the Swiss Supreme Court). • There is no statutory own-name defence eg, bad faith registrations. • A licence can justify use. under Swiss trade mark law, but correspond - ing cases can be subject to the right to con - tinue prior use (see above). 9.2 Defences to Copyright Infringement (Fair Use/Fair Dealing) Swiss law does not provide a general clause that restricts copyright; in particular, there is no exception that permits “fair use”. In contrary, like EU law, for example, the Swiss Copyright Act provides an exhaustive list of specific exceptions (Articles 19–28). Article 11(3) of the Swiss Copyright Act provides an exception to copyright based on parody and satire, which are defined by case law as humor - ous expressions of opinion based on the original work. There is no general exception to Swiss copy - right based on human rights such as the right to free speech, but such general principles are substantiated by the legislature in the exhaus - tive list of exceptions – eg, in the exceptions for quotation (Article 25 of the Swiss Copyright Act) or reporting on current events (Article 28 of the Swiss Copyright Act).
10. Remedies 10.1 Injunctive Remedies
Under Swiss copyright and trade mark law, sev - eral forms of injunctive relief besides the “usual” permanent injunctions are available.
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