Lawyer Trademark Law

A trademark infringement occurs when a person or company acts in a manner that violates the rights of the owner of a registered trademark. This typically happens through the unauthorized use of a sign that is identical to or confusingly similar to the registered trademark, for goods or services that are identical or similar to those for which the mark is registered. In the context of Swiss trademark law, primarily governed by the Federal Act on the Protection of Trademarks and Indications of Source (Trademark Protection Act, TmPA), trademark infringements typically include:

• Unauthorized use of a trademark: The use of a sign that is identical or so similar to a registered trademark that it may cause confusion among the public, without the consent of the trademark owner.
• Infringement of trademark functions: Any action that impairs the main functions of the trademark, particularly its origin, quality, advertising, and investment functions.
• Imitation of trademarks: The creation and use of a sign that is similar to a protected trademark in a manner that poses a risk of confusion with the protected mark.
• Use in business documents: The use of a trademark or a confusingly similar sign in business documents, on products, packaging, advertising, or on the internet in a way that infringes trademark rights.
• Import, export, or sale of products: The import, export, sale, offer, or storage of products in violation of trademark rights.

Trademark infringements can result in both civil and criminal consequences. Civil remedies include claims for injunctions, damages, disclosure of information, and destruction of goods that infringe the mark. In criminal law, prosecution can be initiated for intentional infringements.

It is important for trademark owners to actively monitor their trademarks and take action against infringements to protect the value of their brand and their position in the market.

A trademark is a sign with which companies can distinguish their goods or services from those of other companies. Trademarks play a crucial role in commercial transactions, as they enable consumers to identify the origin of a product or service, and they form the basis for developing trust and loyalty towards a brand or company. In legal terms, the term "trademark" encompasses various types of signs, including:

• Word marks: These consist of words, letters, numbers, or a combination thereof. They can represent, for example, a product name or the name of a company.
• Figurative marks: These include logos, images, symbols, or other graphical representations that do not rely on textual elements.
• Combined marks: A combination of word and image elements that include both graphical and textual components for identification and distinction.
• Shape marks: Also known as three-dimensional marks, they protect the specific shape of a product or its packaging, provided it has a distinctive character.
• Color marks: Certain colors or combinations of colors can be protected as trademarks if they are capable of distinguishing a company's goods or services from those of other companies.
• Sound marks: Acoustic signals, such as jingles or sounds, that can be specifically associated with a company.
• Other forms of marks: Additionally, position marks, pattern marks, and other non-traditional forms of marks can be protected as trademarks if they have the ability to distinguish a company's products or services from those of others.

To be recognized and legally protected as a trademark, a sign must generally be distinctive and must not be exclusively descriptive of the goods or services for which it is used. In Switzerland, trademark protection is typically obtained through registration in the trademark register at the Swiss Federal Institute of Intellectual Property (IPI). With registration, the trademark owner obtains the exclusive right to use the mark for the registered goods and services and to take action against unauthorized use by third parties.

Trademark law protects trademarks as identifiers of goods and services of a company. Its purpose is to legally secure the mark against imitation and unauthorized use by third parties and to grant the trademark owner an exclusive right to the mark. Specifically, trademark law protection includes the following aspects:

• Exclusivity: Trademark law grants the trademark owner the exclusive right to use the mark in business for the designated goods or services. Other individuals or companies are excluded from using an identical or confusingly similar sign for identical or similar goods or services unless they have the trademark owner's permission.
• Distinctiveness function: Trademark law protects the function of the mark to distinguish products or services of a company from those of other companies. This distinctive function helps consumers recognize the origin of the goods or services and make decisions based on it.
• Value of the mark: By protecting trademark rights, the trademark owner can build and maintain the value of the mark. This includes developing brand loyalty and trust among consumers.
• Combatting counterfeiting: Trademark law allows the trademark owner to take legal action against the unauthorized use of their mark, including initiating court proceedings to enforce their rights against counterfeiting, piracy, and unfair competition.
• Licensing and transfer: Trademark law allows the trademark owner to grant licenses for the use of the mark or to transfer the mark to others, which can be an important source of revenue and promote the spread of the mark.
• Avoiding confusion: Trademark law protects against confusion of marks, which is in the interest of both consumers and trademark owners to ensure clarity and security in the market.

In Switzerland, trademark law is governed by the Federal Act on the Protection of Trademarks and Indications of Source (Trademark Protection Act, TmPA). Protection of a trademark typically arises through its registration in the trademark register at the Swiss Federal Institute of Intellectual Property (IPI). Trademark protection initially lasts for ten years and can be indefinitely renewed for additional ten-year periods thereafter.

To verify if a trademark is registered, you can utilize online databases of trademark registries. For Switzerland and internationally, there are various resources:

• Switzerland - Swiss Federal Institute of Intellectual Property (IPI): The IPI manages the Swiss trademark register. You can use the publicly accessible online database "Swissreg" on the IPI website to search for registered trademarks in Switzerland. The database allows for detailed searches based on various criteria, including the trademark name, owner, or trademark number. The IPI website is available at www.ige.ch.
• European Union - European Union Intellectual Property Office (EUIPO): To check if a trademark is registered as a European Union trademark, you can use the "eSearch plus" database on the EUIPO website. This database provides comprehensive information on trademarks protected throughout the European Union. The EUIPO website is accessible at www.euipo.europa.eu.
• International - World Intellectual Property Organization (WIPO): For international trademark searches, WIPO offers the "Global Brand Database." This database contains information on trademarks registered nationally, as EU trademarks, or under the Madrid System for the International Registration of Marks. The WIPO database allows for searching trademarks worldwide. The WIPO website is accessible at www.wipo.int.

These databases are regularly updated and provide extensive information on trademarks, including the representation of the mark, registration date, status of the mark, and owner. However, it's important to note that the search and interpretation of search results can be complex. For specific inquiries or uncertainties, it may be advisable to consult a trademark attorney specialized in trademark law.

Securing a trademark, especially in Switzerland, involves several essential steps to obtain legal protection for your sign and ensure that it is effectively protected against unauthorized use by third parties. Here is a basic guide on how to proceed:

1. Trademark search

• Preliminary search: Before filing a trademark application, conduct a thorough search to ensure that your desired trademark does not conflict with earlier rights of third parties. This includes checking the Swiss trademark database (Swissreg) as well as international databases if you seek broader geographical protection.
• Professional advice: It may be advisable to involve a trademark attorney or agent specializing in trademark law for research and evaluation to obtain a professional assessment.

2. Trademark application

• Application process: The registration of a trademark is done at the Swiss Federal Institute of Intellectual Property (IPI) in Switzerland. The application can be submitted online through the IPI's e-government portal or by using a physical application form.
• Application information: Provide all necessary information, including the representation of the mark, the list of goods and services for which the mark is used (according to the Nice Classification), and your personal or business data.
• Fees: There are fees associated with the application, which vary depending on the scope of the application (number of classes).

3. Examination by the IPI

• Formal and substantive examination: The IPI examines the application for formal correctness and whether there are any absolute grounds for refusal. This includes assessing the distinctiveness and whether the mark is not deceptive or contrary to public policy.

4. Publication and registration

• Publication: Upon successful examination, your mark will be published in the Swiss Trademark Gazette, allowing third parties to file oppositions within a certain period.
• Registration: If no opposition is filed or if the opposition is rejected, the trademark will be registered in the trademark register. This grants you the official protection of your trademark.

5. Trademark monitoring

• Monitoring: After registration, it's important to actively monitor the market to identify potential infringements of your trademark and take action against them. Here, too, the assistance of an attorney can be helpful.

6. Renewal

• Duration of protection: Trademark protection in Switzerland lasts for 10 years from the filing date and can be renewed for additional 10-year periods by paying a renewal fee.

Securing a trademark is a strategic process that requires careful planning and consideration. Professional support can help avoid errors and ensure the best possible protection for your trademark.

The costs of filing a trademark with an attorney can vary depending on the scope and complexity of the application.

The basic fee for filing a trademark application for three classes for 10 years in Switzerland is CHF 450. Each additional class costs CHF 100. Additional costs may apply if the trademark is to be extended internationally.

Trademark rights are infringed when a trademark is used without the consent of the trademark owner, especially if it creates a likelihood of confusion or damages the reputation of the trademark. This can occur, for example, through the use of an identical or similar trademark for similar products or services.

The costs of trademark infringement can be substantial and depend on various factors, including the extent of the infringement, the resulting damages, and the nature of the legal proceedings. Possible costs may include court fees, attorney fees, damages claims, and the obligation to cease the infringing activity. In some cases, criminal sanctions may also be imposed.