TITLE 3 LEGAL PROTECTION
Chapter 1 Civil Law Protection
52. Action for Declaratory Judgment
Any person who proves a legal interest may request the court for a declaratory judgment that a right or a legal relationship subsists or does not subsist under this Law.
53. Action for Transfer of a Trademark
(1) The plaintiff may institute action for transfer of a trademark, in place of a declaration of nullity of the trademark registration, where the defendant has usurped the trademark.
(2) The entitlement shall expire two years after publication of the registration or withdrawal of the owner's consent in accordance with Article 4.
54. Notification of Decisions
The courts shall notify to the Federal Institute final decisions that result in a change in an entry in the Register.
55. Action for Execution
(1) Whoever suffers or is likely to suffer prejudice to his rights in a trademark or in an indication of source may request the courts:
(a) to prohibit an imminent prejudice;
(b) to remove an ongoing prejudice;
(c) to require the defendant to state the origin of the objects in his possession that unlawfully bear the trademark or indication of source.
(2) He may further, in accordance with the law of obligations, institute proceedings for damages and redress and may also require the surrender of profits in accordance with the provisions on agency without authority.
(3) Use of a guarantee or collective mark contrary to the applicable regulations shall also constitute infringement of trademark rights.
56. Institution of Proceedings by Associations and Consumer Organizations
(1) Actions under Articles 52 and 55(1), concerning the protection of indications of source, may also be instituted by:
(a) professional and trade associations whose statutes authorize them to defend the economic interests of their members;
(b) organizations of national or regional scope devoted by statute to the protection of consumers.
(2) Such associations and organizations shall be entitled to institute proceedings under Article 52 with respect to a guarantee or collective mark.
57. Confiscation in Civil Proceedings
(1) The court may order the confiscation of objects that unlawfully bear a trademark or an indication of source and that are in the possession of the defendant.
(2) The court shall decide whether the trademark or indication of source is to be made unrecognizable or whether the objects are to be rendered unusable, to be destroyed or to be used in a specified way.
58. Jurisdiction
(1) The court of the domicile of the defendant or of the place where the act was committed or of the place where the act had effect shall be competent to hear actions provided for by this Law.
(2) Where actions may be taken against several defendants and where they are essentially based on the same facts and legal grounds, action may be instituted against all defendants before any competent court; the court before which first action is instituted shall have exclusive jurisdiction.
(3) Each Canton shall designate the court that has jurisdiction for the whole of its territory as the sole instance for civil proceedings.
59. Precautionary Measures
(1) Any person who reasonably claims that his rights in a trademark or an indication of source are infringed or that he is likely to suffer such infringement and that the infringement is likely to result in a prejudice for him that may not be readily made good may request that precautionary measures be ordered.
(2) He may request, in particular, that the court order measures to secure evidence, to determine the origin of objects unlawfully bearing the trademark or indication of source, or to maintain the existing situation or measures for the provisional execution of preventive injunctions and injunctions to desist.
(3) Precautionary measures shall be ordered by:
(a) the court of the place where proceedings have been instituted;
(b) where no proceedings have been instituted, the court having jurisdiction under Article 58.
(4) Articles 28c to 28f of the Swiss Civil Code shall apply mutatis mutandis in all other cases.
60. Publication of Judgment
The court may order, at the request of the successful party, that the judgment be published at the cost of the other party. The court shall determine the nature and extent of publication.
Chapter 2 Penal Provisions
61. Infringement of Trademark Rights
(1) At the request of the injured party, any person who intentionally infringes the trademark rights of another by:
(a) usurping, copying or imitating such trademark;
(b) placing goods on the market or providing services under the usurped, copied or imitated trademark, offering such goods or services or advertising them,
shall be liable to imprisonment of up to one year or a fine of up to 100,000 francs.
(2) Any person who refuses to state the origin of objects bearing a usurped, copied or imitated trademark, which are in his possession, shall be liable, at the request of the injured party, to the same penalties.
(3) Where such person acts by way of trade, he shall be prosecuted ex officio. The penalty shall be imprisonment and a fine of up to 100,000 francs.
62. Fraudulent Use of Trademarks
(1) At the request of the injured party, any person who:
(a) unlawfully marks goods or services with the trademark of another person in order to mislead and thereby give the impression that the goods and services are original goods and services;
(b) unlawfully offers or places on the market as original goods or offers or supplies as original services goods or services bearing the trademark of another,
shall be liable to imprisonment or a fine of up to 100,000 francs.
(2) Where such person acts by way of trade, he shall be prosecuted ex officio. The penalty shall be imprisonment of up to five years and a fine of up to 100,000 francs.
(3) Any person who imports, exports or stocks goods in the knowledge that they are intended to deceive in the course of trade, shall be liable, at the request of the injured party, to detention or a fine of up to 20,000 francs.
63. Use of a Guarantee or Collective Mark Contrary to the Regulations
(1) At the request of the injured party, any person who uses with intent a guarantee or collective mark in a manner contrary to the regulations shall be liable to imprisonment of up to one year or a fine of up to 100,000 francs.
(2) Any person who refuses to state the origin of objects in his possession that bear a guarantee or collective mark contrary to the regulations shall be liable, at the request of the injured party, to the same penalties.
(3) Where unimportant provisions of the regulations only are concerned, sanctions may be waived.
(4) Where such person acts by way of trade, he shall be prosecuted ex officio. The penalty shall be imprisonment and a fine of up to 100,000 francs.
64. Use of Incorrect Indications of Source
(1) At the request of the injured party, any person who intentionally:
(a) uses an incorrect indication of source;
(b) uses a designation that can be confused with an incorrect indication of origin;
(c) creates the risk of deception by using a name, an address or a trademark in relation to goods or services of different origin,
shall be liable to imprisonment of up to one year or a fine of up to 100,000 francs.
(2) Where such person acts by way of trade, he shall be prosecuted ex officio. The penalty shall be imprisonment and a fine of up to 100,000 francs.
65. Offenses Concerning Producer Identification
Any person who intentionally infringes the provisions on producer identification shall be liable to a fine of up to 20,000 francs.
66. Suspension of Proceedings
(1) The court may suspend penal proceedings if the accused party institutes civil proceedings for nullity of the trademark registration.
(2) If the accused party invokes the nullity of the trademark registration in penal proceedings, the court may allow an appropriate period of time for that party to assert such nullity in civil proceedings.
(3) The term of prescription shall rest during suspension.
67. Offenses in Business Activities
Articles 6 and 7 of the Federal Law on Administrative Penal Law shall apply to infringements committed within an enterprise by subordinates, agents or representatives.
68. Confiscation in Penal Proceedings
Article 58 of the Swiss Penal Code shall apply; however, the court may, notwithstanding paragraph (2) of that provision, order that an object unlawfully bearing a trademark or an indication of source shall be confiscated as a whole.
69. Jurisdiction of Cantonal Authorities
Penal action shall be the responsibility of the Cantons.
Chapter 3 Assistance from the Customs Authorities
70. Reporting of Suspect Consignments
The customs authorities shall be empowered to draw the attention of trademark owners, persons entitled to use an indication of source or professional and trade associations entitled to institute proceedings under Article 56, to specific consignments where there exists a suspicion that goods unlawfully bearing a trademark or an indication of source are to be imported or exported.
71. Request for Assistance
(1) Where the owner of a trademark, a person entitled to use an indication of source or a professional or trade association entitled to institute proceedings under Article 56 has good reason to believe that goods unlawfully bearing a trademark or an indication of source are to be imported or exported, they may request the customs authorities in writing to refuse release of the goods.
(2) The person making the request must provide all particulars available to him that are required for the customs authorities to take a decision; these shall include an exact description of the goods.
(3) The customs authorities shall give a final decision on the request. They may levy a fee to cover the administrative costs.
72. Withholding of Goods
(1) Where the customs authorities have good reason to believe, following a request under Article 71, that goods intended for import or export unlawfully bear a trademark or an indication of source, they shall inform the person making the request thereof.
(2) To enable the person making the request to obtain precautionary measures, the customs authorities shall withhold the goods concerned for 10 working days at most as from the time of the notification under paragraph (1).
(2bis) If warranted by the circumstances, the customs authorities may withhold the goods concerned for an additional period of 10 working days at most.
(2ter) If the withholding of the goods is liable to cause damages, the customs authorities may require from the person making the request that he provide adequate security.
(3) The person making the request shall make good any damages arising from the withholding of the goods if precautionary measures are not ordered or prove to be unjustified.
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