Trademark protection Switzerland: Swiss trademark application for a fixed price / Trademark registration

According to Article 1 of the Swiss Federal Act on the Protection of Trade Marks and Indications of Source (TmPA) (Swiss trademark law) a trade mark is a sign capable of distinguishing the goods or services of one undertaking from those of other undertakings. This may in particular be words (→ word mark), letters, numerals, figurative representations (→ device mark / figurative mark, word and figurative mark / word and device mark), three-dimensional shapes (→ 3D trademark) or combinations of such elements with each other or with colours (→ color trademark).

According to Article 2 TmPA from trade mark protection in Switzerland are excluded signs that are in the public domain, except where they have become established as a trade mark through use for the goods or services for which they are being claimed, as well as shapes that constitute the nature of the goods themselves (→ design protection) or shapes of the goods or their packaging that are technically necessary (→ patent protection). Furthermore, misleading signs and signs contrary to public policy, morality or applicable law are excluded from trademark protection in Switzerland.

A registered Swiss trademark is protected in Switzerland alone. If you want to protect a trademark not only in Switzerland but also in other European countries (e.g. Germany, Austria or Liechtenstein), protection must be claimed separately in these countries – which is also possible, for example, via an international trademark. If, in addition to Germany and Austria, other neighboring countries such as France or Italy etc. should be protected, it is advisable to apply for an “EU trademark” / Union trade mark which (if successfully registered) will give protection in all member states of the European Union.

The costs of a trademark registration or trademark deposit in Switzerland depend on the scope of services requested. These consist of the official fees of the “Swiss Trademark Office” (Swiss Federal Institute of Intellectual Property – IGE / IPI) as well as our fee, if we are allowed to assist you. The official fee for the filing of a trademark in Switzerland in up to 3 classes is 550 Swiss Francs (CHF) for an electronic application. For each further class from the 4th class on, an additional 100 Swiss Francs (CHF) are added.

Overview of official fees for trademark applications in Switzerland:

It is generally possible to apply for a Swiss trademark on your own if you have an address for service in Switzerland. However, if you plan to do so, it is recommended that you familiarize yourself in detail with the prerequisites and requirements of Swiss trademark law. Often such applications fail due to easily avoidable and obvious mistakes. By paying relatively low attorney’s fees, trouble and expensive problems can often be avoided.

Also in Swiss trademark applications details matter. Applications filed by “non-specialists” often aim for a too narrow or too broad a scope of protection and do not protect what is actually intended to be protected. In addition, there are various absolute grounds for refusal which can lead to objections and ultimately to rejections by the “Swiss Trademark Office” / Swiss Federal Institute of Intellectual Property (IPI). Although an objection / provisional refusal cannot be completely ruled out even with appropriate advice, an experienced IP Attorney can point out possible difficulties in advance and, if necessary, suggest alternatives.

Unfortunately, there is no refund of official fees by the Swiss Federal Institute of Intellectual Property. Due to the processing of the application up to that point, including the examination for possible grounds for refusal, you don’t get the fees back from the IPI.

In the case of a Swiss trademark application, it is possible to remedy any deficiencies (e.g. to change the trademark) without incurring additional costs. It is also possible to replace or substantially change the trademark after filing or to extend the list of goods and services. In this case, however, the filing date is postponed and the new filing date is the date on which these amendments are filed.

No, the Swiss Federal Institute of Intellectual Property (IPI) does not check during the registration procedure whether the trademark application comes into conflict with older trademark rights or company signs. This can lead to conflicts with the owners of these rights – such as oppositions and warning letters in course of the proceeding. Trademark searches for identical or similar signs and searches in the commercial register are therefore the responsibility of the applicant.

Procedure of a trademark registration in Switzerland (if we may support you):

➔ Order & payment ➔ summary & draft (search if necessary) ➔ filing of the trademark / application and forwarding of the official fees after your confirmation ➔ receipt examination of the Swiss Federal Institute of Intellectual Property (IPI) as well as formal and substantive examination (e.g. for possible absolute grounds for refusal) >

• ➔ if problems ➔ provisional refusal / preliminary rejection with setting of a time limit to remedy the objection by submitting a statement to the Trademark Office ➔ if this is successful, examination will be continued // if not successful, then rejected and possibility to take action against it
• ➔ if no problems ➔ national registration of the trademark and publication as well as sending of the registration certificate ➔ start of an opposition period of 3 months

(Duration from application to registration of the trademark at the IPI ideally between a few days and several months).

Once the Swiss trademark is registered, you may, for example, use the well-known symbol ® (“R in a circle”) (as an indication of a registered trademark in Switzerland) to advertise the goods and services protected by the sign. An indication such as “registered Swiss trademark” or similar would also be permissible as an optional reference as long as the trademark exists. Misuse may be punishable by law.

A registered Swiss trademark gives protection for ten years from the date of filing – as long as no prior cancellation has taken place.

After the initial protection period of ten years has expired, the trademark can be renewed at the “Swiss Trademark Office” / Swiss Federal Institute of Intellectual Property (IPI) as often as desired for another ten years.

Also in Switzerland, there is an obligation to use a registered trademark. Thus, after the expiration of a five-year grace period, there is an obligation to use the trademark in connection with the goods and services entered in the register. If there is no serious use during an uninterrupted period of more than five years, anyone can request the cancellation of the trademark at the IPI.