SWITZERLAND Trademark Regulations 2

 Chapter 2 Registration of Trademarks

 SECTION 1 REGISTRATION PROCEDURE

 8 Filing

• (1) The official form or a private form approved by the Institute must be used for filing applications.
  
• (2) The Institute shall issue the applicant with a certificate of filing.
  

 9 Application for Registration

• (1) The application for registration shall comprise:
  
  • (a) the request for registration of the trademark;
    
  • (b) the name and forename or the trade name, together with the address, of the applicant;
    
  • (c) a list of the submitted files and the fees paid, stating the mode of payment;
    
  • (d) the signature of the applicant or his representative.
    
• (2) It shall also comprise, where appropriate:
  
  • (a) the name and address of the representative;
    
  • (b) the priority statement (Articles 12 to 14);
    
  • (c) a statement that the trademark is a guarantee or collective mark.
    

 10 Reproduction of Trademark

• (1) The trademark must be capable of graphic representation.
  
• (2) In the case of figurative marks, word/figurative marks or word marks with a special form of writing, 10 reproduceable reproductions in black and white are to be submitted.
  
• (3) Where color is claimed for a mark, the corresponding color or combination of colors is to be stated; in addition, five colored representations of the mark are to be submitted.
  
• (4) Where the mark is three-dimensional or contains such a form, the fact must be noted in the application.
  

 11 List of Goods and Services

The goods and services for which the mark is claimed shall be precisely designated.

 12 Priority Under the Paris Convention

• (1) The declaration for priority under the Paris Convention for the Protection of Industrial Property of March 20, 1883, shall contain the following particulars:
  
  • (a) the date of initial filing;
    
  • (b) the country in which or for which that filing was made.
    
• (2) The priority document shall be constituted by certification from the authority responsible for the initial filing, stating the filing or registration number of the mark.
  
• (3) The Institute shall keep a list of those States that afford reciprocity to Switzerland in accordance with Article 7(2) of the Trademark Law.
  

 13 Exhibition Priority

• (1) The declaration for exhibition priority shall comprise:
  
  • (a) the exact designation of the exhibition;
    
  • (b) a statement of the goods or services shown under the trademark.
    
• (2) The priority document shall be constituted by certification from the competent authority that the goods or services designated by the mark have been shown and shall state the opening day of the exhibition.
  

 14 Common Provisions on Priority Declaration and Priority Document

• (1) The priority declaration must be made within 30 days of filing of the mark at the latest and the priority document must have been submitted within six months of filing, failing which, the claim to priority shall lapse.
  
• (2) The priority declaration may refer to more than one initial filing.
  
• (3) Priority documents may also be filed in the English language.
  

 15 Initial Examination

Where the filing does not satisfy the requirements of Article 28(2) of the Trademark Law, the Institute may give the applicant a time limit for completing the documents.

 16 Formal Examination

• (1) Where the filing does not satisfy the formal requirements laid down in the Trademark Law or in this Ordinance, the Institute shall give the applicant a time limit for correcting the defects.
  
• (2) If the defects are not corrected within the time limit, the request for registration shall be refused in whole or in part. The Institute may exceptionally give further time limits.
  

 17 Substantive Examination

• (1) Where there are grounds for refusal under Article 30(2)(c) or (d) of the Trademark Law, the Institute shall give the applicant a time limit for correcting the defect.
  
• (2) Where the defect is not corrected within the time limit given by the Institute, the request for registration shall be refused in whole or in part. The Institute may exceptionally give further time limits.
  

 17a Continuation of Procedure

If continuation of procedure is requested for an application rejected due to failure to comply with a time limit (Article 41 of the Trademark Law), a continuation fee shall become due.

 18 Filing Fee and Additional Fee

• (1) For filing, the filing fee shall be paid within one month of being requested to do so by the Institute.
  
• (2) Where the list of goods or services of the trademark that has been filed comprises more than two classes, the applicant shall pay an additional fee (class fee) for each further class. The Institute shall determine the number of classes for which fees are due in accordance with the classes under the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of June 15, 1957 (Nice Classification).
  
• (3) The class fee shall be paid within one month of the request to do so by the Institute. It shall be refunded if there is no subsequent registration.
  

 19 Registration and Publication

• (1) If there are no grounds for refusal, the Institute shall enter the trademark in the Trademark Register and shall publish the registration.
  
• (2) It shall issue to the trademark owner a certificate of registration containing the particulars entered in the Register.
  

 SECTION 2 OPPOSITION PROCEDURE

 20 Form and Content of Opposition

Opposition shall be lodged in two copies and shall contain:

• (a) the name and forename or the trade name, together with the address, of the opponent;
  
• (b) the registration number of the trademark or the application number of the filing on which opposition is based;
  
• (c) the registration number of the trademark that is opposed together with the name or trade name of the trademark owner;
  
• (d) a statement of the scope of the opposition lodged against the registration;
  
• (e) a brief statement of the grounds for opposition.
  

 21 Representation of the Parties

• (1) Where the opponent is required to appoint a representative under Article 42(1) of the Trademark Law, he must file the name and address of his representative and submit powers of attorney within the opposition time limit; the Institute may give an additional time limit of 30 days. If he does not comply with this obligation, the opposition shall not be entertained.
  
• (2) If the defendant is required to appoint a representative, he must communicate the name and address of his representative and submit powers of attorney within a time limit given by the Institute. If he does not comply with this obligation, he shall be excluded from the procedure.
  

 22 Correspondence

• (1) The Institute shall advise the defendant of any opposition that is not obviously unallowable and shall give him a time limit for making comments.
  
• (2) The comments of the defendant shall be submitted in two copies.
  
• (3) Where the defendant wishes to claim non-use of the opponent's trademark under Article 12(1) of the Trademark Law, he must do so in his initial comments.
  
• (4) The Institute may pursue further correspondence.
  

 23 More Than One Opposition; Suspension of Decision

• (1) Where more than one opposition has been lodged against the same registration, the Institute shall inform all opponents of the oppositions. It may process all the oppositions together in a single procedure.
  
• (2) Where the Institute deems appropriate, it may first examine one of a number of oppositions and take its decision on that opposition and suspend the procedure for the other oppositions.
  
• (3) Where the opposition is based on a trademark filing, the Institute may suspend its decision on the opposition until such time as the trademark has been registered.
  

 24 Compensation of Parties

Compensation awarded to the parties by the Institute shall be determined in accordance with Article 8 of the Ordinance of September 10, 1969, on Costs and Compensation in Administrative Procedures.

 SECTION 3 EXTENSION OF TRADEMARK REGISTRATION

 25 Notice of Expiry of Term of Validity

The Institute shall remind the trademark owner and his representative by a written notice of the date of expiry of the term of validity of the registration six months prior to such date. No such notices will be sent abroad.

 26 Extension

• (1) A request for extension of a trademark registration may be filed at the earliest 12 months prior to expiry of the term of validity; it shall be filed in writing.
  
• (2) Extension shall take effect on expiry of the preceding term of validity.
  
• (3) The Institute shall provide the trademark owner with a certificate of extension of the registration.
  
• (4) For extension of a registration, an extension fee and, where applicable, a class fee (Article 18(2)) shall become due.
  
• (5) If the request for extension is submitted after lapse of the registration, a surcharge shall become due.
  

 27 Refund of Class Fee

Where a request for extension is filed and does not result in extension of the registration, the class fee shall be refunded.

 SECTION 4 AMENDMENT OF TRADEMARK REGISTRATION

 28 Assignment

• (1) The request for entry of an assignment shall be filed by the previous trademark owner or by the acquirer and shall comprise:
  
  • (a) an explicit statement by the previous owner or other satisfactory document showing that the trademark has been assigned to the acquirer;
    
  • (b) the name and forename or the trade name, together with the address, of the acquirer and of his representative, where appropriate;
    
  • (c) statement of the goods and services for which the trademark has been assigned, where assignment is partial.
    
• (2) Where a trademark has been assigned in part, the term of validity of the registration of the assigned part shall expire at the same time as the registration of that part of the trademark still belonging to the previous owner.
  

 29 Licenses

• (1) A request for entry of a license shall be filed by the owner of the trademark or by the licensee and shall comprise:
  
  • (a) an explicit statement by the owner of the trademark or other satisfactory document showing that the owner has granted use of the trademark to the licensee;
    
  • (b) name and forename or trade name, together with the address, of the licensee; where appropriate, that of his representative;
    
  • (c) where appropriate, a request that the license be entered as an exclusive license;
    
  • (d) statement of the goods and services or of the field for which the license has been granted in the event of a partial license.
    
• (2) Subsection (l) shall apply to the entry of a sublicense. Additionally, proof must be provided that the licensee is entitled to grant sublicenses.
  

 30 Other Amendments to Trademark Registration

On the basis of a corresponding statement by the trademark owner or other satisfactory document, entry shall be made of:

• (a) usufruct and pledges affecting the trademark;
  
• (b) limitations on use imposed by the courts and by enforcement authorities;
  
• (c) changes concerning the registered particulars.
  

 31 Cancellation of Rights of Others

The Institute shall cancel, on a request by the owner of the trademark, a right entered on behalf of another person if an explicit statement of renunciation by the owner of such right or other satisfactory document is filed.

 32 Corrections

• (1) Incorrect entries shall be corrected without delay at the request of the trademark owner.
  
• (2) Where the error results from a mistake on the part of the Institute, correction shall be effected ex officio.
  

 33 Filing of Request and Payment of Fees

The request for amendment or correction shall be submitted in writing. It shall be deemed to have been filed when the fee invoiced to that end by the Institute has been paid. Where simultaneous registration of more than one amendment is requested with respect to the same trademark, one fee only shall become due.

 34 Amendments Free of Charge

The following amendments shall be free of charge:

• (a) entry of first appointment of a representative and cancellation of representation;
  
• (b) amendments resulting from an enforceable court decision or an enforcement measure, as also limitations on use imposed by courts and enforcement authorities;
  
• (c) preliminary noting of amendments in the file;
  
• (d) corrections resulting from errors made by the Institute.
  

 SECTION 5 CANCELLATION OF TRADEMARK REGISTRATION

 35 Cancellation of Trademark Registration

• (1) Requests for cancellation of a registration shall be filed in writing. A request for partial cancellation (restriction of the list of the goods and services) shall not be deemed to have been filed until the fee invoiced to that end by the Institute has been paid. Complete cancellation shall be exempt of fees.
  
• (2) Where the request results from a court decision, a copy of the decision with certification of its entry into force shall be attached; no fee shall be levied.
  

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