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.
The 5 Steps to a Swiss Trademark
1. preliminary search
It is recommended to conduct a similarity search before filing a trademark application. Such a search identifies confusingly similar trademarks that are already registered. This is relevant because third parties who have registered earlier trademarks may oppose a new registration and/or use of a confusingly similar trademark by filing an opposition to the trademark registration or a lawsuit in a civil court.
2. definition and/or translation of the goods and services
The trademark application must specify the goods and services for which the trademark is to be protected. The goods and services are specified according to the “International Classification of Goods and Services under the Nice Agreement” (so-called Nice Classification). This divides the goods and services into 45 classes.
After registration of a trademark, the goods and services for which the trademark is protected can only be limited, but not extended. Therefore, new goods or services cannot be added. To protect the trademark for newly added goods or services, a new trademark must be filed.
If a trademark registration has already been made outside Switzerland in a language other than German, French or Italian and the same sign is now to be protected in Switzerland, a translation of the goods and services will be made in an official language.
3. file a trademark application
A national Swiss trademark application is filed with the Swiss Federal Institute of Intellectual Property on behalf of the trademark owner. International trademarks are filed with WIPO. If a word/figurative trademark is to be filed, a high-resolution jpg of the relevant logo in grayscale or color is required for this purpose.
Swiss trademark applications are publicly available in the online trademark register swissreg.ch within a few hours to a few days at the latest. Therefore, a special application strategy is necessary for trademarks that should be hidden from the public for as long as possible.
4. Trademark examination
After filing a trademark application, the responsible trademark office checks whether there are any absolute grounds for exclusion of protection.
The Swiss Federal Institute of Intellectual Property mainly rejects the following signs ex officio:
- Descriptive signs, signs that need to be kept free or misleading signs.
- Signs that are contrary to public order or morality.
- Shapes of the goods or packaging that are technically necessary or conditional.
The Swiss Federal Institute of Intellectual Property also checks the correct wording of the goods and services and the classification in the correct class according to the Nice Classification.
If all requirements are met, the Swiss Federal Institute of Intellectual Property registers the Swiss trademark. In the online trademark register swissreg.ch, the status of the trademark is changed from “pending application” to “active trademark”. After that, the 10-year renewal period starts to run.
With the national Swiss trademark registration, a 3-month opposition period also begins to run at the same time. Third parties who already have a confusingly similar Swiss trademark registration can file an opposition against the trademark with the Swiss Federal Office of Intellectual Property during this period. If a likelihood of confusion based on the younger, newly registered trademark is affirmed, the trademark will be cancelled.
After expiration of the opposition period, registered Swiss national trademarks can only be challenged with civil court proceedings or cancellation requests at the Swiss Federal Institute of Intellectual Property based on non-use.