A trademark is a sign that distinguishes the goods and services of one company from those of other companies. The consumer recognizes from a trademark which company a product or service originates from (so-called distinctiveness). Trademarks can be words, individual letters, pictorial representations, three-dimensional shapes, melodies or combinations thereof (e.g. logos).
For a trademark to be registered, it must not be descriptive of the goods or services for which it is to be used and registered. This would mean that the distinctive character of the trademark would not be fulfilled. In addition, it must not be contrary to morality or misleading. Signs that need to be kept free are also not registrable as trademarks. These include designations that are required by all market participants to designate the type, quality, quantity, destination, value or origin of the goods or services. Consequently, common abbreviations, indications of origin, factual indications and/or coats of arms are also not registrable.
A registered trademark protects a sign for 10 years. However, the trademark can be renewed every 10 years for another period of 10 years.
The scope of protection of a trademark is defined by the goods and services for which it is to be used and which are specified in the application.
Like all intellectual property rights, trademarks are territorial property rights, i.e. they offer protection in the country in which they are registered. So that not all countries have to be registered individually, there is the possibility to register an international trademark. In this case, the countries for which the trademark is to provide protection are specified when the application is filed. Currently, 124 countries can be selected: https://www.wipo.int/export/sites/www/treaties/fr/documents/pdf/madrid_marks.pdf . There is also the possibility to register a European Union trademark, which is valid for all EU member states, i.e. Switzerland is not covered.
Trademark law gives the trademark owner the exclusive right to use the trademark to identify the goods or services specified in the registration. The owner of a registered trademark can therefore prohibit third parties from using a confusingly similar sign for similar goods and services.
The Trademark Application
A national trademark application is filed with the competent office, in Switzerland the Swiss Federal Institute of Intellectual Property in Bern. The application must specify the goods and services for which the trademark is to be protected. International trademarks are filed with the World Intellectual Property Organization (WIPO) in Geneva. European Union trademarks are filed by an authorized European trademark representative at the European Union Intellectual Property Office in Alicante.
For all member states of the Paris Convention (Paris Convention), including Switzerland, it is possible to apply for registration of the same trademark in another member state within six months of filing the application, whereby the date of the first application can be taken over. Currently, this concerns 177 states: https://www.wipo.int/export/sites/www/treaties/en/documents/pdf/paris.pdf
The Swiss trademark application procedure takes a total of approximately 5 months. It starts with the filing of the application and ends with the registration or the final rejection of the trademark. Against payment of an additional fee, an express application can be filed. In this case, the Swiss Federal Institute of Intellectual Property examines the application within 4 weeks.
Our trademark department offers the following services:
- Conducting similarity searches for similar or identical trademarks, conducting use searches that clarify and/or demonstrate the use of a trademark in the marketplace
- Assessment of the registrability of signs
- Advice on global trademark protection strategies
- Elaboration or translation of a list of goods and services
- Registration of trademarks in all desired countries, including monitoring and reminder of the deadline for renewal of the trademark after registration is completed
- Execution of official notices, e.g. provisional rejection notices
- Trademark renewal
- Monitoring a trademark for recent trademark registrations that may infringe trademark rights
- Drafting and filing oppositions against similar third-party trademarks
- Issuing warning letters requesting third parties who use confusingly similar signs to cease and desist from an existing trademark infringement in the future
- Defense of the trademark against infringement or attack by third parties
- Transfer, change of address or change of name of registered trademarks
The costs for a national Swiss trademark application in 1 to 3 Nice classes amount to approx. CHF 1’300. For each additional class approx. CHF 150 are added. If an express application is to be made, costs of approx. CHF 400 are added.
For checking and forwarding the registration certificate and maintaining the representation until the next renewal, another approx. CHF 300 will be charged after registration of the trademark.
In addition, there may be costs for the preparation or translation of the list of goods and services or the removal of objections from the Trademark Office.
The cost of renewing a Swiss trademark is approximately CHF 1,300.
The costs for filing an international registration depend on the number of designated countries, which is why we will be happy to provide you with an individualized cost estimate in this regard. Costs of at least CHF 2,000 must be expected.