What Can I Protect as a Trademark?
In 2020, the Swiss Federal Institute of Intellectual Property (IPI) reported a new record value of intellectual property applications in Switzerland. However, every successful entrepreneur knows that for the success of an innovation, something crucial is: a strong brand. That's reason enough to translate some important terms from trademark law into understandable language.
Term Definition: Trademark
A trademark is a designation or symbol for a product that makes it distinguishable and unmistakable for consumers in the market. A trademark can be a graphic logo, a single word, a whole sentence in the form of a slogan, a combination of letters or numbers, or a melody.
Why You Should Protect Your Trademark
A strong brand is essential for the long-term success of a product. In this sense, a brand can be worth its weight in gold. And you should protect this value before a competitor takes advantage of it. Once your trademark is registered, you can legally take action against its misuse by third parties.
Which Trademarks Can Be Protected and How
A trademark to be protected must be registered in the Swiss Trademark Register (Swissreg). Therefore, it's important to know the different types of trademarks that the law distinguishes between. Let's take a closer look at these below.
1. Types of Trademarks
Individual Tardemark
This can refer to the company, a brand of article, or a proprietary brand. Examples: Rolex, Ricola.
Collective Trademark
A collective trademark is one that is used within a business association. Examples: FLEUROP, Crédit Suisse.
Guarantee Trademark
It indicates specific characteristics. This can be a quality seal or an indication of origin. The consumer can rely on these criteria being met, as they are regularly rigorously controlled by recognized certification bodies appointed by the government. An example is the "Suisse Garantie" (Swiss Guarantee) trademark. All products listed under it must consist of at least 90% domestically produced agricultural ingredients. Only certified companies are authorized to use the guarantee trademark.
Geographical Indication Trademark
In this case, it is not the company but the origin that is made known. An example is "Emmentaler" – one of the first geographical indications recognized by the IPI. The registered goods can be found in the Register of Designations of Origin (PDO) and the Register of Geographical Indications (PGI). A geographical indication trademark may only be printed on products produced within the specified region. The individual regulations can be found in the specifications for this.
Often, entrepreneurs wonder how terms or identifiers related to Switzerland can be used. Examples include "Suisse Quality," "Made in Switzerland," the image of the Matterhorn, or the Swiss cross. In principle, you are free to use these. However, the product must also strictly comply with the regulations set forth in the Trade Mark Protection Act (TmPA). This means that the product must actually be of Swiss origin. In the area of "Swissness," the IPI requires a value of at least 80% local origin for composite products.
2. Types of Trademarks
Image Trademark
An image trademark is a logo without text. It is also possible to register just a color claim – more on that below. In this case, third parties can use the logo, but not with the same color. If you register your complete image trademark for protection, the image cannot be used in any color by another market participant. Examples of well-known image trademarks are the apple of Apple or the bird of Twitter.
Word Trademark
This describes combinations of letters or numbers, whole words, or sentences. Examples include "501" or slogans like "Still living or already dwelling?"
Combination of Image and Word Trademark
These two types can also be combined. You are probably familiar with such combinations from manufacturers like Lacoste, Puma, or Red Bull.
Three-Dimensional Trademark
Examples are the packaging of Toblerone or the Mercedes star. This type of trademark is rarely registered nowadays. Instead, the complete design is usually protected.
Acoustic Trademark
These include jingles or advertising songs. These were very popular in the 1980s and 1990s. You probably still remember "Bacardi Feeling" or "That's how summer tastes" – both are good examples of acoustic trademarks. The second song was even composed specifically for the ice cream brand in 1994.
Color Trademark
Colors are generally considered public property. However, it may be possible to protect a color scheme that has become a distinguishing feature for a brand. Examples of registered color trademarks are the yellow of 3M Post-it notes or the brown of UPS delivery vehicles.
Position Trademark
These are designs that are always found in the same position and size on a product. Examples include the logos of Adidas or Puma on shoes.
Movement Trademark
A movement trademark has a moving, for example, rotating, design.
Hologram Trademark
Hologram trademarks are logos and images that have a spatial or three-dimensional character depending on the viewing angle. A hologram trademark has not yet been registered in Switzerland.
Exceptions and Limits
Some things cannot be protected. These include factual information, individual symbols, coats of arms, and abbreviations. Descriptive features that are too direct may also not be registered as a trademark, such as "waterproof" for umbrellas. Additionally, all trademarks must not be confused with other trademarks or products. Of course, they must also not violate public order.
Fees and Duration
The initial application and protection for 10 years cost CHF 550. If you want to extend the protection for the same period afterward, it costs CHF 700.
More Typical Questions About Trademark Protection
Is online registration possible?
Yes, through e-trademark.ige.ch. The publication on Swissreg then takes place automatically.
Where can I register my trademark in EU countries?
By applying to the European Union Intellectual Property Office (EUIPO), a trademark is protected throughout the EU. In addition, protection can be extended to other countries worldwide through the Madrid System. You must apply for this at the IPI. Alternatively, you can register your trademark directly in the relevant country.
When should or must I use the famous ® symbol in my trademark name?
This is only necessary if your trademark is registered in the Swiss Trademark Register. It is not mandatory to use the protection symbol.
Does the IPI check whether my trademark is already registered before application?
No, you have to ensure this yourself. There are various online databases available for this purpose, such as www.swissreg.ch.
What special considerations apply to company names?
If your company is registered in the commercial register, it does not automatically mean that the company name can also be protected as a trademark. If you wish to protect the name as a trademark, it will always be examined first according to the criteria of trademark protection.
Can I make the application alone?
In principle, you can do this. However, since trademark law is very complex and contains some pitfalls, you are better off with a specialist by your side.
Where can I find a good trademark lawyer?
GetYourLawyer assists you in finding a specialist in trademark law. Simply submit your request online and find a lawyer who suits you and who will competently guide you through the trademark application process.
