A trademark is a legally protected sign, used to distinguish products and services belonging to different businesses. Any graphic representations can be used as trademarks according to the law, including words, letter combinations, numericals, graphic images, slogans, three-dimensional forms, tones, or combinations of all these elements.
Trademarks in Switzerland
Registering a trademark gives the owner the exclusive right to use a certain sign for specific goods and services or to grant others the right to use it (by licensing). Trademark owners can also prevent others from using identical or similar signs for same or similar goods and services.
Trademark registration fees in Switzerland are 550 CHF for three classes of goods and services for a period of 10 years. The surcharge for every additional designated class of goods and or services is 100 CHF. The protection period can be renewed indefinitely for each 10 years. Under normal circumstances, the Swiss Federal Institute of Intellectual Property examines the trademark application in approximately six days. In other cases, under special circumstances, the registration period can take up to three months.
Promotional or descriptive words can’t be used as trademarks, because these need to remain available for the general public. Because Switzerland uses multiple languages, it’s necessary to analyze any potential trademark, to prevent any potential trademark conflicts in the public domain of all three national languages. Descriptive English words are also not allowed.
A trademark offers protection only for certain goods and services. If the trademark is not used for the specific goods and services indicated in the registration application for five years after the registration, it is possible to lose the trademark protection.
Trademarks must not be misleading about the characteristics of goods and services, especially about their origin, qualities and properties. In addition, trademarks that contain a Swiss indication of source, may only be registered for goods and services that are of Swiss origins, according to “The Swissness Act”
The Swiss coat of arms, the coat of arms of the cantons, communes and other Swiss public authorities are not allowed to be registered as trademarks or as elements of trademarks.
When is a trademark protected in Switzerland?
A trademark is protected only after it has been entered in the trademark register, which is the final step of the trademark registration process.
Firm names, business names and domain names are similar to trademarks, because they serve the purpose of identifying a certain business. Firm and company names are registered in the commercial registry and the cantonal commercial registry office. Domain names and top-level domains are registered by registrars. However, if a domain name or a business name meets the requirements for a trademark registration, it is possible to register it as a trademark.
In Switzerland, trademarks are protected in two ways:
1. By registering the trademark nationally, with protection in Switzerland only;
2. By extending the trademark protection in Switzerland for a trademark registered abroad.
International trademarks are administrated by the World Intellectual Property Organization in Geneva. In Switzerland, it’s possible to protect trademarks registered in Switzerland, as well as international trademarks.
Under the provisions of The Trade Mark Protection Act, if no color is clamed at the time of registration for a trademark, the respective trademark is protected for all colors. If a color has been claimed, the protection is limited to the trademark in the respective color only.
If it’s necessary to extend the trademark protection for other goods and services, for example for new products of the same company, the trademark must be re-registered with and expanded list of goods or services.
Trademark protection abroad
According to two international treaties, the Madrid Agreement and the Madrid Protocol, the administrative procedures for extending trademark protection are much simplified. A centralized notification system is used on international level, in order avoid trademark infringements. 97 states and regional entities, including EU, USA, Russia, China, Japan, Australia and most Easter European countries are all contracting parties of the two international treaties from Madrid.
International trademark applications can also be filed with the Swiss Institute of Intellectual Property, provided that the applicant has a trademark or a Swiss trademark application and fulfills the conditions of international registration. It is also necessary to meet any one of the three conditions:
- The applicant has a real and effective commercial or industrial establishment in Switzerland;
- The applicant must be a Swiss resident;
- The applicant must be a Swiss national.