Most common trademark proceedings in Switzerland

1)     Disclaimer

The provided content is addressed to foreign trademark professionals, with in-depth understanding of trademark law and proceedings. For other groups, the lack of context might lead to misunderstandings.

Official fees such as trademark office and court fees are mentioned according to our knowledge at the time of writing. Our figures could be incorrect, outdated or incomplete. Required depth of argumentation, inclusion of recent jurisdiction, amount of evidence to be included and the required correspondence determine involved professional fees. Before basing any decision in a specific case, please discuss the (cost) risk involved with your agent in charge.

2)     Provisional refusal (absolute grounds)

Trademarks registered in Switzerland are examined by the Swiss Trademark Office (IPI). The IPI is known for a rather severe examination practice. While we welcome the trademark quality resulting through this practice, there are often good chances to overcome an initial provisional refusal partially or in total.

If the IPI considers the filing to not comply with Swiss trademark law or their registration guidelines, the IPI will issue a provisional refusal. Depending on the issue (formal refusal or refusal based on absolute grounds such as distinctiveness issues) the claimed goods and services need to be amended, specified or there is the need to evaluate if the refusal can be overcome with valid arguments.

a)      Filing an argumentative statement with the IPI

Depending on the reason for refusal a statement can be filed with the IPI within a few days, setting out the arguments in support of protection. In the best case the trademark will be officially registered within a few weeks up to one or two months. If the IPI insists on the refusal, additional arguments can be filed if wished. No further official fees are incurred at the IPI. Our attorney fees for substantive statements to the IPI, including a preliminary consultation, the filing of the statement and reporting the decision following the initial statement start at around CHF 600.

b)      Appeal proceeding

The final decision of the IPI can be challenged with the federal administrative court. Depending on the importance of the registration for the trademark holder and recent court practice in similar cases, an appeal proceeding at the federal administrative court can be considered (court fees are usually around CHF 4’000-5’000). Involved attorney fees strongly depend on the case and depth required for the appeal starting at around half of the involved official fees.

c)      Proceed with a new filing

Depending on the actual trademark use, client requirements and the basis of the filing (national Swiss filing or internation registration) there might be the option to amend the filed trademark or better proceed with a new amended filing. Especially if filing priority is not an issue, a new amended national filing can be a good option to obtain trademark protection (total cost including official and professional fees starting around CHF 900).

3)     Cancellation proceedings (non-use)

Registered trademarks are subject to use-requirements and can be challenged with non-use revocation five years after their registration.

With a cancellation proceeding at the Swiss Trademark Office (IPI), trademarks registered for more than five years can be requested to be declared invalid based on non-use.

A non-use cancellation request should be filed together with a professional in-use search (to be obtained by a third party) at the IPI. The total cost to file a cancellation proceeding against one registered trademark start at around CHF 2’000 (including official fees of the IPI, third party in-use search fees and professional fees for preliminary assessment and filing of the request). The total cost risk is at around CHF 5’300 (proceeding with two exchanges of statements and total defeat).

Especially if the owner of the attacked trademark files use evidence, a second statement to file arguments regarding the submitted evidence is recommended.

Should the request be granted, the losing party will be required to cover the official fees of the IPI, the attorney fees and the third party in-use search fees. If the trademark holder immediately accepts the cancellation – and no cease-and-desist letter was sent in advance – no indemnity payment is granted. If the request is dismissed, the defending party must be reimbursed with CHF 1’200 per statement (up to two statements).

4)     Opposition proceedings (relative grounds)

In the examination proceeding the IPI examines only absolute grounds. Relative grounds such as prior registrations are not taken into consideration and holders of prior marks are also not informed by the IPI of potential infringing newer registrations.

Owners of prior trademarks can file oppositions, three months after registration of newer trademarks. Total cost to file an opposition start at around CHF 1’700 (including official fees of CHF 800 and professional fees to file grounded opposition), while the total cost risk is at around CHF 5’000 (proceeding with two exchanges of statements and total defeat). We highly recommend filing the opposition with an in-depth argumentation, as arguments cannot be filed at a later stage.

Opposition proceedings are limited to specific topics (similarity of goods and services and similarities of signs, leading to a risk of confusion).

In defence statements, the opposing mark can be contested with non-use revocation, urging the owner of the opposition trademark to file use evidence if their mark is not in its non-use grace period anymore. Depending on the importance of the case, it is also an option to counter file separate cancellation proceedings against the opposition mark or initiate civil court proceedings, especially to challenge the validity of the mark the opposition is based on. Initiating such counter proceedings will lead to a suspension of the opposition proceeding.

5)     Civil court actions

The proceedings at the IPI are limited to the examination process as well as opposition and non-use cancellation proceedings. If these proceedings and instances mentioned above do not provided the required outcome, claims relating to trademarks can be brought to civil courts.

Civil court proceedings are especially required if arguments such as bad faith, unfair competition, invalid repetition trademarks or contractual agreements are relevant. But civil courts can also decide on other trademark related questions such as risk of confusion or valid use.

Ordinary civil court proceedings include cost risk starting at five to six figure sums and can easily last several years.

Contact us in case you need further information or if you would like to discuss a specific case!