This country-specific Q&A provides an overview of Intellectual Property laws and regulations applicable in Switzerland.
What different types of intellectual property rights exist to protect: (a) Inventions (e.g. patents, supplementary protection certificates, rights in trade secrets, confidential information and/or know-how); (b) Brands (e.g. trade marks, cause of action in passing off, rights to prevent unfair competition, association marks, certification marks, hallmarks, designations of origin, geographical indications, traditional speciality guarantees); (c) Other creations, technology and proprietary interests (e.g. copyright, design rights, semiconductor topography rights, plant varieties, database rights, rights in trade secrets, confidential information and/or know-how).
According to the Federal Act on Patents for Inventions (PatA) patents are granted for new inventions applicable in industry. Anything that is obvious having regard to the state of the art is, however, not patentable as an invention. In addition, supplementary protection certificates can be granted in relation to active ingredients or combination of active ingredients of medicinal products, provided that the product as such, a process for manufacturing it or a use of it is protected by a patent and an official authorisation has been granted for placing the product on the Swiss market as medicinal product.
Distinctive brands, which are neither misleading nor contrary to public policy, morality or applicable law may be protected as trademarks, which are governed by the Federal Act on the Protection of Trade Marks and Indications of Source (“TmPA”).
The TmPA also provides for the protection of so called guarantee marks, which may be used by several undertakings and guarantee specific characteristics (e.g. quality, geographical origin or the method of manufacture) of the goods and services sold under the guarantee mark. Further, associations (not individuals) can protect so called collective marks. A collective mark is a sign of an association of manufacturing, trading or service undertakings which serves to distinguish the goods or services of the members of the association from those of other undertakings. Finally, the TmPA provides for specific provisions regarding the protection of indications of source and geographical indications (“POA/PGI”).
In addition, under the Federal Unfair Competition Act brands are protected against measures of third parties that may cause confusion or are considered as an act of passing-off.
(c) Other creations, technology and proprietary interests:
Creations (including artistic or scientific works and works of applied art) with an individual character, i.e. a certain degree of originality, can be protected by copyright (Art. 2 of the Federal Act on Copyright and Related Rights, “CopA”). Software is mainly protected by copyright in Switzerland. The CopA also protects related rights, i.e. rights of performers, phonogram and audio-visual fixation producers and broadcasting organisations.
A design, whether two- or three-dimensional, can be protected if it is new and has individual character, i.e. if its overall impression differs sufficiently from existing designs that could be known to the circles specialised in the relevant sector in Switzerland (Federal Act on the Protection of Designs).
Three-dimensional structures in the field of semiconductors can be protected as topographies under the Topographies Act.
Plant varieties and their designations are protected by the Federal Law on the Protection of New Plant Varieties.
(d) Rights in confidential information and/or confidential know-how:
Not registerable other technology and proprietary interests may also qualify as trade or business secrets, which may – depending on the circumstances of the individual case – be protected under the Swiss Criminal Code, the Unfair Competition Act and the Swiss Code of Obligations, but have to be mainly protected in the framework of agreements with business partners and through sufficient technical measures.
What is the duration of each of these intellectual property rights? What procedures exist to extend the life of registered rights in appropriate circumstances?
Patents are protected for a maximum of 20 years from the filing date of the patent application. The term of protection of a supplementary protection certificate begins as soon as the maximum term of protection (20 years) for the patent protection for the active ingredient or combination of active ingredients expires, and lasts for up to 5 years. Paediatric supplementary protection certificates are granted for a period of 6 months from the expiry of the longest term of the patent.
Trademarks are protected 10 years from their filing date. Protection can then be renewed indefinitely for further 10 years periods by filing (i) a respective request to the Federal Institute of Intellectual Property (“IPI”) within the last twelve months prior to the expiry of the term of validity and not later than six months after its expiry and (ii) payment of the respective renewal fee.
Designs are protected for an initial period of 5 years from their filing date. Upon request to the IPI and payment of the renewal fee the protection may be extended for further 4 periods of 5 years each, i.e. the total possible protection period for designs is 25 years.
Creations are protected under the CopA as soon as they are created, irrespective of whether they have been fixed on a physical medium. The duration of copyright protection varies depending on the type of work: The protection of software expires 50 years after the author’s death, whereas for all other works, protection expires 70 years after the author’s death. In case of joint ownership where the individual contributions may not be separated, the relevant point of reference is the death of the last surviving joint author. If the author is unknown, protection expires 70 years after the publication of the work or, if it has been published in instalments, 70 years after the final instalment.
The term of protection for a registered topography is 10 years from the date the registration request has been recognised as valid or the date the topography has been put on the market. The term of protection for an unregistered topography is two years from the date of the first distribution of the topography. In any case, the protection ends 15 years after the development of the topography.
Protection of plant varieties expires at the end of the 25th calendar year following the granting of the title, but at the end of the 30th calendar year for varieties of vines and trees.
Who is the first owner of each of these intellectual property rights and is this different for rights created in the course of employment or under a commission?
As a general rule and provided the conditions for protection are fulfilled, the first owner is the creator or inventor.
There is no “work for hire” concept for copyrights under the CopA. Copyrights vest with the employee who has created the work, but are transferred to the employer to the extent this is covered by the specific purpose of the employment agreement. For computer programs created by an employee under an employment contract as part of his/her duties or contractual obligations, even though the ownership vests with the employee, the employer alone is entitled to exercise the exclusive rights of use. According to the Swiss Code of Obligations, inventions and designs produced by the employee in the course of his/her work for the employer and in performance of his/her contractual obligations belong to the employer. The parties can however provide otherwise in writing. The employer has also a legal right to reserve in writing its rights to acquire inventions and designs produced by the employee in the course of his/her work for the employer but not in relation to the performance of his/her contractual obligations. In such case, the employer must pay the employee an appropriate remuneration.
Which of the intellectual property rights described above are registered rights?
Who can apply for registration of these intellectual property rights and, briefly, what is the procedure for registration?
Except in cases described below, any natural or legal person can apply for registration of these intellectual rights: first owner, successor in title or a third person whose right is based on other legal grounds, e.g. assignment of rights.
In order to register a patent, the applicant must file a patent application to the IPI including a patent claim defining the invention, technical drawings, an abstract and the technical documents. The IPI first examines whether the formal requirements have been met. In case there are any deficiencies, the applicant will be granted a deadline to correct them in order for the procedure to continue. Otherwise, the application will be rejected. The patent application is published 18 months after the application or where appropriate after the priority date. Around three years after the application (or earlier in case of an accelerated examination procedure), the IPI will conduct a substantive examination, during which patent experts examine the technical content of the application and notify the owner of any potential deficiencies. The IPI does not examine novelty and inventive step of the invention. If there are no deficiencies or if they have been rectified within a given deadline, the patent will be granted. Supplementary protection certificates can only be filed for a patented and authorised product. The application must be filed within 6 months of either the first authorisation to place the product on the market in Switzerland as a medicinal product, or of the grant of the patent if this was granted later than the first authorisation.
For trademarks and designs, the applicant must file an application to the IPI containing information such as the reproduction and/or description of the sign, the designated goods and/or services, the name of the owner, etc. Collective marks may only be registered by an association of manufacturing, trading or service undertakings. Upon payment by the applicant of the registration fee, the IPI examines the formal requirements and – for trademarks – the potential absolute grounds for refusal. If the IPI considers that the requirements are fulfilled, the trademark/design is registered. If there are deficiencies in the application, it will issue an objection and grant the applicant an extendable term to answer to the objection. If the applicant is not able to overcome the objection, the IPI will (partly) reject the application.
PGI/POA can only be registered by a representative group of producers. The application is filed with the IPI for non-agricultural products, and with the Federal Office for Agriculture for agricultural products, and must include amongst others a product specification defining the product and its method of production.
The registration of topographies only requires the applicant to submit an application form containing the necessary details along with documentation identifying the topography, and pay the registration fee. The examination itself is a mere formality.
How long does the registration procedure usually take?
In general, the duration of the registration procedure varies on a case by case basis.
The registration procedure of a patent can take several years. The applicant can submit a request for an accelerated procedure, in which case the substantive examination will begin immediately upon receipt of the application (instead of about 3 years after filing).
In trademark matters, after the payment of the application fee it takes approximately 4 months to obtain a registration, provided that the IPI does not raise any objection against the registration of the sign. Against payment of an additional fee of CHF 400, the applicant can request a fast-track examination, where the IPI will examine the trademark application within a maximum of one month following filing and register the trademark, subjects to objections of the IPI, after the payment of the filing fee.
A design registration can be completed, if done properly, in a matter of days, as the IPI only reviews the formal requirements, without conducting a material review of the design.
The PGI/POA registration generally takes approximately 2 years. The procedure involves amongst others an investigation of the representativeness of the group applying for registration and the product specification. Moreover, the Federal Office for Agriculture will obtain the opinion of the Commission for Designations of Origin and Geographical Indications, and will also call upon the relevant cantonal and federal authorities for their opinions.
Do third parties have the right to take part in or comment on the registration process?
Third parties do not have the right to take part in or comment on the registration process with the IPI. However, they can assert their rights, e.g. by filing within the respective deadline a trademark opposition, once the registration has been published.
What (if any) steps can the applicant take if registration is refused?
A decision refusing the registration can be appealed within 30 days to the Federal Administrative Tribunal. Based on a limited set of legal grounds, the decision of the Federal Administrative Tribunal can then be appealed to the Federal High Court.
What are the current application and renewal fees for each of these intellectual property rights?
The fee for protecting a patent is of CHF 200 for the application, CHF 500 for the optional search and CHF 500 for the examination. A renewal fee of CHF 100 is requested for the 4th year, after which the fee increases annually by CHF 50 (CHF 150 for the 5th year, etc.). The fee for obtaining a supplementary registration certificate is CHF 2,500, with an annual maintenance fee of CHF 950 for the first year, increasing annually by CHF 50 for the next years.
The basic fee for protecting a trademark in 1 up to 3 classes of products or services for 10 years is CHF 550. A fee of CHF 100 is requested for each additional class of products or services. For fast-track proceedings, an additional fee of CHF 400 is requested. The renewal fee for 10 additional years is CHF 700, irrespective of the number of classes.
The basic fee for protecting a design for 5 years is CHF 200. An additional fee of CHF 100 is added up for each additional design submitted within the same application, up to a maximum CHF 700. The basic fee includes the publication of one illustration, each additional illustration costing CHF 20. The renewal fee for 5 additional years of protection is CHF 200.
The filing fee of a PGI/POA for non-agricultural products is CHF 4000. There is no fix filing fee for PGI/POA related to agricultural products.
The official fee for the protection of topography is CHF 450.
What are the consequences of a failure to pay any renewal fees and what (if any) steps can be taken to remedy a failure to pay renewal fees?
As a general rule, the IPI will grant the owner of an IP right an additional deadline of six months to pay the renewal fee, plus an additional fee of CHF 50. If the IPI receives no payment within this additional term, the IP title will lapse. For the renewal of patents, the rights can be re-established if the patent applicant provides prima facie evidence that he/she/it has been prevented, through no fault on his/her/its part, from observing the time-limit.
What are the requirements to assign ownership of each of the intellectual property rights described above?
The assignment in whole or in part of patents, trademarks and designs requires a respective commitment and a separate material transfer of the rights and is only valid if evidenced in writing. The assignment of a guarantee or collective mark must in addition be registered in the trademark register in order to be valid.
There is no formal requirement for the assignment of copyright ownership, which may even be concluded orally. However, for evidence purposes and to avoid possible interpretation disputes, it is advisable to enter into a written agreement. Moral rights under the CopA are in general not assignable. However, the author can waive his respective rights or allow a third party to exercise certain of his moral rights.
Economically, IP rights may also be “transferred” in the course of corporate transactions in the form of a share deal: Whereas, legally, title to the IP rights remains with the same company, the shares in such company are transferred to an acquirer. Share purchase agreements are generally concluded in writing for evidence purposes (written form is required with regard to limited liability companies). The form of the transfer as such depends on the legal form of the entity in question, whether or not share certificates have been issued and, with regard to corporations, whether the entity has issued registered shares or bearer shares.
IP rights may also be transferred in the course of other corporate transactions, including mergers, de-mergers or asset transfers pursuant to the Swiss Merger Act. Such transactions generally require a written agreement and some form of corporate resolution depending on the entities involved as well as registration in the commercial register.
As they are tied to a specific product and not to a specific owner, PGI/POA cannot be assigned as such.
Is there a requirement to register an assignment of any of these intellectual property rights and, if so, what is the consequence of failing to register?
Only for guarantee or collective marks: The assignment of a guarantee or collective marks will not be valid if it is not registered in the trademark register. Otherwise, there is no requirement to register the assignment. However, if the assignment is not registered, it will not be enforceable against a third party having acquired rights to the intellectual property in good faith from the assignor (i.e. without knowledge of the assignment to the assignee).
What are the requirements to licence a third party to use each of the intellectual property rights described above?
There is no formal requirement for the provision of a licence, i.e. license agreements may also be concluded orally. However, a written agreement is advisable for evidence purposes and to avoid possible interpretation disputes. This is especially the case as license agreements are innominate contracts.
Is there a requirement to register a licence of any of these intellectual property rights and, if so, what is the consequence of failing to register?
The grant of licences to collective marks are only valid if entered in the trademark register. Otherwise, there is no requirement to register a license to an IP right. However, a non-registered license is not enforceable towards third parties who acquire the licensed right (including in the framework of bankruptcy proceedings) in good faith.
Are exclusive and non-exclusive licensees given different rights in respect of the enforcement of the licensed IP, and if so, how do those rights differ?
Unless this is expressly excluded in the license agreement, the exclusive licensee is entitled to bring a claim for infringement against third parties on their own. On the contrary, non-exclusive licensees do not have the capacity to initiate such proceedings, without the consent of the licensor. However, under general civil procedure rules any licensee may join an infringement action in order to claim its own damages.
Are there criminal sanctions for infringement of any intellectual property rights, and if so, what are they and how are they invoked?
Patent, copyright, trademark, design, topography rights and plant variety rights infringement is considered a criminal offence. However, criminal liability requires an infringer to have acted wilfully. The sanction to a criminal offense is imprisonment of up to 1 year and/or a fine. If the offender acts for commercial gain (i.e. the offender acts in the manner of a profession to make a living), the sanction is imprisonment of up to 5 years or and/or a fine.
Criminal proceedings against IP infringements can be initiated by lodging a complaint before the competent cantonal criminal prosecutions authorities, either orally or in writing. Only if the offender acts for commercial gain, he/she must be prosecuted ex officio.
What other enforcement options are available for each of the intellectual property rights described above? For example, civil court proceedings, intellectual property office proceedings, administrative proceedings, alternative dispute resolution.
IP rights holders can enforce their rights through civil or administrative actions (e.g. expedited trademark cancellation proceedings or opposition proceedings), or with the assistance of custom authorities who can seize infringing goods for a limited period of time so that that the right holder can obtain a preliminary injunction or conclude a settlement with the importer, respectively the exporter.
Since 1st January 2017, the cancellation of a trademark on the grounds of non-use can be requested through simplified/expedited administrative cancellation proceedings before the IPI.
Preliminary injunctions are available and can be filed prior or simultaneously with a claim on the merits. In case of special urgency, the Court may order ex parte preliminary injunctions, i.e. immediately without first hearing the opposing party.
What is the length and cost of such procedures?
The length depends on many factors including the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court and the workload of the Court. It usually takes from a few days to obtain an ex parte preliminary injunction up to a few weeks to obtain a regular preliminary injunction (if the counterparty is heard and can take position). It usually takes between 1 and 3 years to obtain an ordinary proceeding-judgement in cantonal proceedings (first instance). Under Swiss procedural law, only two instances are available for the conduct of civil intellectual property disputes (one cantonal instance and the Swiss Federal Supreme Court as an appeal instance). Appeal proceedings before the Federal Supreme Court take in general 6 months to 1 year, as there usually are no hearings.
The costs of infringement proceedings (including Court fees and attorneys’ fees) in cantonal proceedings (one instance) vary significantly but can be roughly estimated between CHF 30,000 and CHF 100,000 (first instance). The amount also depends on the above-mentioned factors. The Court will usually request the claimant to deposit a security for the Court’s costs and the counterparty’s compensation claims if requested by the latter. The amount of Court fees depends on the value in dispute. The losing party bears the Court fees and usually has to pay a financial compensation covering part of the successful party’s attorney’s fees (as further specified in established court tariffs).
The costs of appeal proceedings before the Federal Supreme Court are usually lower than in cantonal proceedings.
The filing costs for a simplified/expedited cancellation request to the IPI on the grounds of non-use as well as for a trademark opposition are currently CHF 800. Attorney’s fees for such cancellation request or trademark opposition depend on the complexity of the case. In a relatively straightforward matter, they can be estimated between CHF 2,000 and CHF 3,000. The defendant in such proceedings might bear substantially higher internal costs since he will have to gather and provide substantial dated evidence on his prior use of the trademark in the cancellation request or if rights-preserving use is contested in a trademark opposition proceeding. These proceedings are fast but can easily be extended to 1 year or more if the parties request extensions of deadlines.
Where court action is available, please provide details of which court(s) have jurisdiction, how to start proceedings, the basics of the procedure, the time to trial, the format of the trial, the time to judgment and award of relief and whether any appeal is available.
In IP matters, each of the 26 cantons have designated a Court which handles intellectual property disputes as a sole instance (in the cantons Zurich, Berne, Aargau and St. Gallen the so called “commercial courts” are competent), with the exception of patent disputes regarding validity, infringement or grant of licenses which are all handled by the Federal Patent Court.
Proceedings are initiated by filing a written submission with the competent Court. The Court will then set a deadline to the claimant to deposit a security in advance. Upon payment of the security, the claim will be served upon the defendant with a deadline – from 30 days to 3 months – to respond. In complex matters, the Court may order and the claimant can request a second exchange of briefs (in the Swiss court’s language “Replik” and “Duplik”). Each party has an unconditional right to take position on the other party’s arguments. The Court will then set a hearing. In complex cases, the scope of the first hearing (so-called “instruction hearing”) is to prepare the main hearing (discuss the matter in dispute in an informal manner, give details regarding the witnesses, etc.). In practice, the instruction hearing is mostly used to encourage the parties to reach a settlement of the dispute and judges tend to present their legal reasoning on the case to that particular effect. In more simple cases, this instruction hearing will be immediately followed (within the same session) by the main hearing, where the taking of evidence will take place. The time to judgement depends on various factors, such as the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court and the workload of the Court.
The decisions of the Cantonal Courts in IP-related matters (sole first instance) or the Federal Patent Court can be appealed to the Federal Supreme Court (second instance).
What customs procedures are available to stop the import and/or export of infringing goods?
In case of suspicion of infringing imported/exported goods, the Customs Administration can temporarily withhold the goods on its own initiative and inform the rights’ owner.
The rights’ owner can also lodge a request with the Customs Administration to seize allegedly infringing goods. Once granted, such assistance can be upheld and will be applied on a daily basis until renewal becomes due. The applicant must provide all information necessary to decide on the seizure to the Customs Administration in advance. If the Customs Administration has reasonable grounds to suspect that the goods are counterfeits, it will seize them and inform the rights’ owner and the infringing goods’ owner. The Customs Administration can withhold the goods for a maximum of up to 20 working days, within which the rights’ owner will have to obtain a preliminary injunction from the competent judge (or close the matter by settlement with the receiver of the goods where it is agreed who pays the triggered costs and what should happen with the seized goods [usually destruction]). Within the same deadline, the infringing goods’ owner must oppose destruction of the goods if such destruction was requested by the rights’ owner.
Are any non-court enforcement options or dispute resolution mechanisms mandatory in respect of intellectual property disputes in any circumstances? If so, please provide details.
They are only mandatory if the dispute is based on a contractual matter where the contract provides for pre-agreed non-enforcement options and/or dispute resolution mechanisms before resorting to state courts or arbitration proceedings.
What options are available to settle intellectual property disputes?
In-court conciliation and/or mediation can be requested by the parties or recommended by the judge at any time during the civil proceedings. Out-of-court settlements are also available. It is also acknowledged in Switzerland that intellectual property disputes can be arbitrated (including decisions on the validity of registered intellectual property rights). The IPI will recognize an arbitral award as the basis for or amendment of a new entry in the register.
What is required to establish infringement of each of the intellectual property rights described above? What evidence is necessary in this context?
To establish a patent infringement, the claimant has to evidence the existing patent claims and then compare the established claims with the product allegedly infringing the patent.
Infringement of trademark can be established by showing that the disputed sign is (i) identical to the earlier trademark and intended for the same goods or services, or (ii) identical to the earlier trademark and intended for similar goods or services such that a likelihood of confusion results, or (iii) similar to the earlier trademark and intended for the same or similar goods or services such that a likelihood of confusion results. However, where the proprietor has not used the trademark in relation to the goods or services for which it is claimed for an uninterrupted period of five years, he may no longer assert his right to the trademark, unless there are proper reasons for non-use.
To establish design infringement, the design right owner must show that the disputed object has the same essential features and thus produces the same overall impression as the registered design.
Copyright infringement requires the owner to show that the infringer has used its work without authorisation. This implies to assess which elements are to which extent common to both works, whether they cover the essential part of the work and whether such elements fulfil (alone or in combination) the requirements for copyright protection.
Owners of PGI/POA must show the PGI/POA is used without meeting the requirements set out in the requirements specification of the PGI/POA.
Establishing topography infringement requires the right owners to show that there is an unauthorised reproduction of the topography.
Plant variety right owners must show that unauthorised production or reproduction of the propagating material of the protected variety or conditioning for the purpose of propagation is taking place, or that unauthorised materials of the protected variety are sold and marketed.
How does the court acquire any necessary information (fact or technical) and in what circumstances does it do so? In particular a) Is there a technical judge, a judge with technical experience, a court appointed expert, an expert agreed by the parties, and/or parties’ expert witness evidence? b) What mechanisms are available for compelling the obtaining and protecting of evidence? Is disclosure or discovery available?
a) As a general rule, there are no technical judges and it is up to the parties to evidence any factual or technical information by filing physical records and written statements, requesting testimony, inspection, file expert opinions and request expert to be appointed by Court. If a witness has special (e.g. technical) expertise, the Court may ask him/her/it questions about his/her/its assessment of the facts of the case. The Court may also request ex officio the opinion from one or more experts, if this proves necessary due to the complexity of the matter. Assessments on Swiss law, however, are not to be examined by external experts (the court applies the law; “iura novit curia”).
The commercial courts in the cantons Zurich, Berne, Aargau and St. Gallen provide for so called “commercial judges” or “subject matter judges” which operate as external part-time judges with a particular knowledge on a certain business sector (such as e.g. engineering or life science or banking and insurance). Regular proceedings are usually assessed by two (2) to three (3) regular judges and/or two (2) to three (3) commercial/subject-matter judges. The Federal Patent Court is composed of judges with legal training and judges with technical training. In general, the Court makes its decisions as a three-member body, of whom at least one member must possess technical training.
b) There is no pre-trial discovery under Swiss proceedings rules. Precautionary taking of evidence is only ordered by the Court in limited cases (usually where there is a credible risk of loss of evidence for later proceedings). The Parties have the obligation to cooperate in the taking of evidence, for instance to produce the physical records requested by the opposing party if ordered by the Court. Cooperation may, however, be refused if information is protected by the attorney-client-privilege or by other secrets if the secrecy interest overweighs the interest on ascertaining the truth.
How is information and evidence submitted to the court scrutinised? For example, is cross-examination available and if so, how frequently is it employed in practice?
The Court can freely assess the evidence taken. The parties have to evidence each of their allegations by offering evidence, such as e.g. physical records, testimony or questioning of the parties, for each allegation. In general, the witnesses and parties will be questioned by the Court or the party who has requested their testimony/questioning and only in relation to the specific allegations where their testimony/questioning was requested, but some Cantonal Courts tend to be more flexible than others. Also, cross-examination may occur indirectly, if a counterparty addresses the Court on additional questions deemed necessary and the Court then submits these additional questions to the witnesses/parties.
What defences to infringement are available?
Available defences include without being limited to non-infringement (e.g. no likelihood of confusion in trademark matters or differing technology used than in a disputed patent claim), prior use (to the registration), non-use, invalidity of the IP right, exhaustion of the IP right, forfeiture of rights, compulsory licences (incl. e.g. FRAND-licenses), special privileges, private use.
Who can challenge each of the intellectual property rights described above?
As a general rule, any person who can demonstrate a legal interest. Oppositions to trademark registrations may be filed by the owner of an earlier registered trademark or the owner of an earlier well-known not registered trademark.
When may a challenge to these intellectual property rights be made (e.g. during any registration process or at any time during the subsistence of the right)?
IP rights may not be challenged during the registration process. Once registered, cancellation claims based on the notion of invalidity are permissible by any person who can demonstrate a legal interest.
An opposition to a trademark or PGI/POA registration based on a conflicting trademark or PGI/POA must be submitted within 3 months from the registration’s publication. An opposition against a patent based on a conflicting patent must be filed within 9 months from the date the patent was granted.
A claim on the merits based on an alleged infringement can be filed at any time, subject to the rights not being forfeited. There is no fixed time period for the forfeiture of rights, which may however occur if the plaintiff has tolerated the infringement for an extensive period of time (several years) and the infringer has acted in good faith.
Whereas there is no time limit for filing interim measures, such request is subject to the condition of urgency, which requires the applicant to act promptly upon discovery of the infringement.
Damage claims related to IP infringement become time-barred 1 year from the date on which the claimant became aware of the damage and of the identity of the infringer, but in any event 10 years after the date on which the damage occurred.
Briefly, what is the forum and the procedure for challenging each of these intellectual property rights and what are the grounds for a finding of invalidity of each of these intellectual property rights?
The forum for challenging the registration of patents, trademarks, plant variety rights and non-agricultural PGI/POA, as well as for requesting the cancellation of a trademark for non-use directly before the IPI (administrative path), is the seat of the IPI in Berne. The forum for challenging the registration of agricultural PGI/POA is also Berne.
In civil proceedings, the forum depends on whether the case at hand is a national or international dispute. In national infringement cases, the claimant can potentially file its claim on cancellation of an intellectual property right in the following venues: its own domicile or registered office, the defendant’s domicile or registered office, and the place where the infringing act occurred or had its effects. In international disputes, the claimant can potentially file its claim on cancellation of an intellectual property right in the following venues: domicile of the defendant, if no domicile in Switzerland, the Swiss courts at the domicile of the representative marked in the intellectual property register, if not available, at the domicile of the IPI in Berne.
The grounds for a finding of invalidity include prior rights, non-fulfilment of the legal registration requirements (e.g. for trademarks, relative or absolute grounds or refusal or for patents lack of novelty), non-use, expiry.
Are there any other methods to remove or limit the effect of any of the intellectual property rights described above, for example, declaratory relief or licences of right?
Declaratory reliefs are available if there is a legal uncertainty on a potentially disputed matter and no other forms of claims are available to the claimant. Moreover, compulsory licences on a patent may be granted in certain cases where the efforts by the applicant to obtain a contractual licence on appropriate market terms within a reasonable period of time have been unsuccessful. Such compulsory licences are in relation to the field of semiconductor technology, research tools, diagnostic tools and export of pharmaceutical protection. Compulsory licenses may also arise out of competition law constraints, e.g., if an intellectual property owner has a dominant position in the market (standard-essential patents) and is deemed to abuse his position. In such cases, compulsory licenses must be granted under fair, reasonable and non-discriminative conditions (FRAND-licenses).
Copyright law provides for a compulsory licence, against remuneration, for manufacturers of phonograms. Furthermore, Swiss copyright law provides that copyrighted software code may be decompiled and reverse engineered, if this proves necessary to establish interoperability with other software/systems that are legally used.
For plant varieties protection rights, a compulsory licence may be granted to a person whose licence request was rejected without sufficient ground, provided that there is a public interest.
What remedies (both interim and final) are available for infringement of each of the intellectual property rights described above?
Available remedies include preliminary and definitive injunctions, declaratory judgements, assignment of the intellectual property rights, order to disclose the origin and quantity of infringing goods and name of the recipients, order to disclose the extent of any distribution to commercial and industrial customers and amounts received therefore, damages, publication of the judgement and/or destruction of the infringing goods and their removal from the market.
What are the costs of enforcement proceedings and is any kind of costs recovery available for successful parties? Is there a procedural mechanism enabling or requiring security for costs?
The costs of enforcement proceedings depend on many factors including the complexity of the dispute, the number and length of submissions and evidences filed by the parties, the number of hearings held by the Court, the forum of the proceedings and the behaviour of the parties. Each canton sets the tariffs for the procedural costs. The amount of Court fees depends mainly on the value in dispute and is adapted based on the above-mentioned factors.
The Court will request the claimant to make deposit a security up to the amount of the expected Court costs. The Court decides on the procedural costs in its final decision. The decision on the procedural costs for interim measures may be deferred until the final decision on the merits.
In general, the losing party bears the Court fees and usually has to pay a financial compensation covering part of the successful party’s attorney’s fees (specified in court tariffs).
At the request of the defendant and under certain conditions, the claimant must deposit security for party costs, for example if he/she/it has no residence or registered office in Switzerland or if there is an important risk that the fees will not be paid at the end of the proceedings.
Has the COVID-19 pandemic caused any changes (temporary or permanent) to the protection or enforcement of intellectual property? For example, changes to deadlines, filing or evidence requirements or court processes.
Yes, at the beginning of the COVID-19 pandemic, Switzerland decided to order a national “lock-down” and the following steps were implemented:
All hearings scheduled until April 19, 2020 were adjourned (except for urgent matters). All deadlines were suspended until April 19, 2020. The suspension did, however, not apply to summary proceedings and preliminary injunctive measures. Local/deviating rules in local/cantonal proceedings remained reserved.
All deadlines with the IPO (IP Office) were suspended until April 19, 2020. Deadlines determined by months or years, however, were not suspended.
The official “lock-down” has been considerably untightened since April 16, 2020 with a step-by-step plan and deadlines now run normally. However, many courts still maintain strict “social distancing”-rules which may have an impact on how face-to-face-procedures are led within a court building.
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