07-31-2012 (Newsletter Issue 12/12)Most Creative CountryThe Global Innovation Index 2012 Report has been published by the World Intellectual Property Organization (WIPO) in conjunction with the international business school INSEAD. The report ranks 141 countries and economies on the basis of their innovation capabilities and their results.
The top 10 leading countries are:
1. Switzerland – 2. Sweden – 3. Singapore – 4. Finland – 5. United Kingdom – 6. Netherlands – 7. Denmark – 8. Hong Kong (China) – 9. Ireland – 10. United States of America
To access the report, please click here
08-01-2011 (Newsletter Issue 10/11)Change of PracticeThe Swiss Federal Institute of Intellectual Property has announced on its website that applicants with a principle place of business abroad must no longer appoint a representative.
With the entry into force of the Patent Attorney Act (PatAA) on July 1st, 2011, the mandatory appointment of a representative laid down in the Patent Act, Trade Mark Protection Act and Design Act will be set aside: whereas applicants without residence or a principle place of business in Switzerland previously had to appoint a representative domiciled in Switzerland, they may now indicate a correspondence address in Switzerland only. Any communication with the Institute needs to be in one of the three national languages (German, French or Italian).
Source: Isler & Pedrazzini AG, Zurich, Switzerland,
Swiss Federal Institute of Intellectual Property
01-01-2011 (Newsletter Issue 1/11)Trademark Guidelines RevisedThe Swiss Federal Institute of Intellectual Property has revised its Trademark guidelines as of January 1st, 2011. Of note are the following changes:
- Adaptation of the guidelines due to the nearly complete waiver of signature requirements, as well as the introduction of the legally binding electronic submission via email
- Amendment of the guidelines regarding rule 18ter 1) GAFO, declaring the declaration of grant of protection obligatory (if no refusal of protection was notified)
The full text of the guidelines is available in German and French. For more information please click here
08-07-2010 (Newsletter Issue 13/10)Electronic Submissions by E-mail IntroducedThe Swiss Federal Institute of Intellectual Property (IPI) has introduced electronic submissions by e-mail. It is now possible for all users of intellectual property rights systems to easily submit legally binding applications and re-sponses in electronic format.
For more information please click here
04-14-2010 (Newsletter Issue 9/10)Improved Trademark Classification WebsiteAn improved version of the trademark classification and examination website has been launched in Switzerland.
The website can be found at http://wdl.ipi.ch
09-12-2009 (Newsletter Issue 3/09)
Reduction of Official Fees for Electronic Filing Limited
The reduction of official fees for electronical filing is limited until December 31st, 2009. After this date there will no longer be a cost reduction for electronical filing.
Till December 31st, the fee for one application in up to three classes is CHF 350 (approx. EUR 230.00) and the fee for each additional class is CHF 60.00 (approx. EUR 39.00), if filed electronically.
Legal basis is the Law on Protection of Trademarks of August 28th, 1992, in force since April 1st, 1993, as last amended on August 1st, 2008.
Switzerland is a member of the Madrid Agreement and the Madrid Protocol.
Trademark protection is obtained by registration or enjoyed by well-known trademarks (Art. 6 bis Paris Convention).
Nice classification, 10th edition
Registrable are all distinctive signs, such as words, letters, numerals, devices, colours, combinations or shades of colours, three-dimensional forms, sounds, and other non-traditional marks provided they can be represented graphically. Types of trademarks: trade marks, service marks, collective marks and certification marks.
The application is filed at the Swiss Federal Institute of Intellectual Property.
Any communication with the Swiss Federal Institute of Intellectual Property needs to be in one of the three national languages (German, French or Italian).
Multiple-class applications are possible.
Foreign applicants do not need a local agent anymore. A correspondence address in Switzerland is sufficient.
No power of attorney is required.
Foreign applicants do not need a domestic registration.
The examination is only on absolute grounds mainly regarding the distinctiveness and the wording of the list of products and services, but not on relative grounds such as identical or similar prior registrations. Signs which are not considered to be distinctive by the examiner can be registered, if it can be established that they have acquired distinctiveness by use.
An application matures into registration within three months if no objections have been raised.
An accelerated examination can be requested for an additional official fee of CHF 400.00. Such an application is published and registered within one month.
After registration, the trademark is published on www.swissreg.ch.
An opposition can be filed within 3 months from the publication date.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
3 months. Starting from the first day of the month following the month of publication in the WIPO Gazette.
The mark is protected as from the date of application and is valid for 10 years. The registration can be renewed for further periods of 10 years.
If the trademark has not been used within 5 years from the end of the opposition period or the end of the opposition proceeding, mark rights can no longer be claimed. Subsequent use of the trademark has the effect that the mark is protected as from the application day unless the third party has claimed non-use of the mark in the meantime.
According to a treaty between Germany and Switzerland, the use of the same mark by a German mark owner is sufficient to fulfil the use requirements in Switzerland and vice versa.
The official fee is CHF 550.00 (approx. EUR 530.00 ) for up to three classes and CHF 100.00 (approx. EUR 96.00) for each additional class.
Trademark Licence Agreement
A licence agreement may be concluded in writing, by oral agreement or inferred by conduct. Licensing of unregistered marks is permitted. A licence may be restricted to only some of the goods and/or services covered by the trademark. In this case, the concerned goods and/or services must be specifically indicated. The sale of a registered trademark does not automatically terminate a licence. There are no statutory provisions prescribing the terms of licensing.
There are provisions in law for the recordal of a licence with the Trademark Office. The recordal is not mandatory. According to provisions of the Swiss Trademark Act there is an exception for collective marks for which the recordal of licences is mandatory. There is no time frame for a recordal. There is no required form for a licence agreement, but in order to have the licence recorded, the trademark law requires a written confirmation from the licensor including exact details of the licensor and the mark as well as the first and family name of the licensee (or its business) and its address. If it is an exclusive licence or only a partial licence this also has to be specified in this declaration.
No further documents are required.
The licence becomes effective with the conclusion of the agreement by the licensor and the licensee. The licence is only enforceable against a licensee if recorded in the Trademark Register at the time of the transfer. It is enforceable as soon as it has been published in the official database. The recordal is required to be published once by the Registry in the Online Trademark Register. The licence agreement is not required to be published to be deemed effective.
There is no evidentiary presumption that use by a registered licensee is permitted use. All licensees may join in an infringement action to claim damages. There is no provision in law that the licensee may call upon the owner to institute infringement proceedings. The licensor is usually contractually obliged to institute infringement proceedings in order to protect the interests of its licensees. The registered user may not institute proceedings in his own name, even if the proprietor refuses or neglects to do so, unless the licence is exclusive. An exclusive licensee is entitled to institute proceedings in his own name at any time (unless this is explicitly excluded in the licence agreement) and without having to consult or call upon the trademark owner unless otherwise provided for in the agreement.
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