What legally qualifies as a trademark?
A trademark is a sign that distinguishes the goods or services of one company from those of other companies. This can be a word, a logo, a combination of letters, a number, a pictorial representation, a three-dimensional shape, or a combination thereof (Art. 1 MSchG).
For SMEs, this means: not only the company name can be relevant under trademark law. A product name, a slogan, an app icon, a graphic logo, or the combination of name, lettering, and color can also be a trademark. Trademark rights generally arise upon registration in the trademark register (Art. 5 MSchG). Consequently, anyone who merely uses a sign but does not register it as a trademark does not automatically have the same protection as a registered trademark.
At the same time, it is important to note: even if you have not yet registered a trademark yourself, you can still infringe prior rights with your planned name or logo. The risk of trademark infringement in Switzerland does not only arise after your own trademark application, but already with the commercial use of a colliding sign.
Why does entry in the commercial register not automatically protect as a trademark?
Entry in the commercial register protects the company, i.e., the official corporate name, but it does not replace a trademark examination. The company entered and published in the commercial register is indeed reserved for the exclusive use of the entitled party (Art. 956 OR). However, this company protection is not the same as trademark protection.
An example: A LLC can be registered in the commercial register and still use a name that collides with an older trademark. Conversely, a trademark can give a company rights to a sign that is not identical to its company name. The Swiss Federal Institute of Intellectual Property therefore explicitly points out that a company is not automatically protected as a trademark and that searches for identical and similar trademarks, companies, and domain names should be conducted before a trademark application.
Furthermore, case law shows that company components can also be risky. In a decision regarding "NOBILIS Switzerland LLC" and "Nobilis Estate stock corporation", the Federal Supreme Court stated that descriptive additions such as a geographical reference or field of activity do not necessarily suffice if the dominant component is adopted (BGer 4A_238/2023 E. 2.2).
When is there a threat of trademark infringement in Switzerland?
A trademark infringement in Switzerland is threatened primarily when a younger sign is similar to an older trademark and is used for identical or similar goods or services, creating a risk of confusion (Art. 3 Abs. 1 lit. c MSchG).
Likelihood of confusion does not only mean that customers actually confuse two companies. It is also sufficient if they assume an incorrect economic connection because of the similarity. The Federal Supreme Court describes this as follows: A likelihood of confusion exists if the younger sign impairs the older trademark in its distinctive function and the relevant trade circles attribute goods or services to the wrong trademark owner or assume false connections (BGer 4A_28/2021 E. 6.5).
The decisive factor is the overall impression. For word marks, sound, visual appearance, and meaning count. For logos, the visual motif, design, colors, shapes, and dominant elements count. The more similar the goods or services are, the more distinct the younger sign must be. For identical products, a small difference in the logo or a slightly different font is often not enough.
Which questions should SMEs check before choosing a logo and name?
Before launching, you should not only ask whether the name "still sounds free." The decisive factor is whether prior rights exist and whether your sign comes too close to these rights.
First, you should check whether identical or similar trademarks are registered or filed in Switzerland. For this, Swissreg is the most important starting point. There you will find Swiss trademarks and international trademarks with protective effects in Switzerland. However, this search is only an initial guide. The IGE points out that Swissreg is not sufficient to conclusively clarify potential conflicts because similar spellings, similar pronunciations, and visual elements can only be found to a limited extent.
Next, you should check whether similar companies exist in the commercial register. This is particularly important if your company name is also to be used as a trademark or product identifier. Domain names, social media handles, and Google hits can also provide indications of whether a sign is already being used in the market.
Particular caution is required with logos. Device marks and graphic elements are more difficult to research than pure word marks. Two logos can be problematically close even if the text is different, but the shape, motif, color scheme, or overall effect is similar. Especially during a rebranding, a professional trademark search is worthwhile before rolling out the new visual identity on the website, packaging, and advertising.
Why is a search for identical names not enough?
Many SMEs search only for the exact name. That is not enough. Trademark law not only protects against identical signs, but also against similar signs if a likelihood of confusion is thereby created (Art. 3 Abs. 1 MSchG).
A trademark can therefore also be problematic if it is spelled differently but sounds similar. Likewise, an abbreviation can be risky if it adopts the dominant component of an older trademark. For logos, a similar visual motif with similar design can already be sufficient if the targeted customers cannot clearly tell the signs apart in their memory.
The well-known decision on chocolate bunnies shows how much the overall impression counts. The Federal Supreme Court affirmed a likelihood of confusion because the challenged products, based on the memory of the average public, leaned heavily on the protected shape. Minor differences in details did not eliminate the likelihood of confusion (BGer 4A_587/2021 E. 8.3).
What consequences can a trademark infringement have?
Anyone who infringes or endangers an older trademark can be stopped by court order. The trademark owner can demand that an imminent infringement be prohibited, an existing infringement be remedied, and information be provided about the origin, quantity, and distribution of illegally marked items (Art. 55 Abs. 1 MSchG).
Trademark law also gives the trademark owner the right to prohibit others from certain uses. This includes, for example, applying the sign to goods or packaging, offering services under the sign, and using it on business papers, in advertising, or otherwise in the course of trade (Art. 13 Abs. 2 MSchG).
This can become expensive for an SME. Imaginable scenarios include an immediate halt to campaigns, new packaging, new domain names, new signage, adjustments in the commercial register, claims for damages, and costs for lawyers and courts. In the event of intentional trademark infringement, criminal risks are also added (Art. 61 MSchG).
When is a trademark application worthwhile?
A trademark application is particularly worthwhile if the name or logo is to be used in the long term. This applies, for example, to a new product, a service, an online shop, an app, a franchise concept, or a rebranding.
With the registration, you define the goods and services for which you claim protection. This scope of protection is central. A trademark does not protect "everything", but basically the registered goods and services. Therefore, the list of goods and services should be formulated carefully. If it is too narrow, protection will be lacking later. If it is too broad or unsuitable, unnecessary risks and costs will arise.
If you need assistance with trademark protection, Jurata will be happy to help you at any time: Trademark protection.
What is the practical procedure?
A multi-stage approach is the safest. First, check whether your desired name is distinctive. Purely descriptive terms are weaker and often more difficult to protect. Then, search for identical and similar trademarks in Swissreg. Supplement the search with international trademarks, companies in the commercial register, domain names, and a general web search.
Afterwards, you should not just collect results, but evaluate the risk of collision. This involves three core questions: Are the goods or services identical or similar? Are the name or logo similar? Could the public assume that both offers come from the same company or are economically connected?
If a hit is very close, an adjustment is usually cheaper than a later dispute. A new name before the launch is annoying. A new name after the website, packaging, advertising, customer acquisition, and brand building is significantly more expensive.
Frequently asked questions about trademark infringement in Switzerland
Can I use a name if the domain is still free?
No. A free domain does not mean that no trademark rights exist. Domain availability, commercial register entry, and trademark law are different levels. Prior to registration and use, you should check whether identical or similar trademarks or companies exist.
Does the IGE check for older trademarks during the trademark application?
The IGE does not check ex officio whether your trademark collides with older identical or similar trademarks. Therefore, a trademark can be registered and still be challenged later if it infringes older rights.
Is a similar logo allowed if the name is different?
This depends on the overall impression. A different name can help, but it does not always eliminate the risk. If the visual motif, shape, color scheme, and design strongly call to mind an older trademark, there may still be a likelihood of confusion.
What is the most important step to avoid trademark infringement?
The most important step is conducting a search before the launch. Search not only for identical names, but also for similar signs, similar industries, and similar logos. The earlier you check, the easier and cheaper you can avoid risks.
