Why should you check a trademark before filing?
You should check a trademark before filing because prior trademark rights can jeopardize your registration, use, and marketing. If your trademark is challenged later, you face opposition, cancellation, injunctive relief claims, and high rebranding costs.
Legally, a trademark is a sign capable of distinguishing the goods or services of one business from those of other businesses. This includes, for example, words, letters, figures, images, three-dimensional designs or combinations of these with colors (Art. 1 MSchG).
It becomes problematic if your sign comes too close to a prior trademark. Excluded from trademark protection are in particular signs that are identical or similar to an earlier trademark and are intended for the same or similar goods or services if this creates a risk of confusion (Art. 3 Abs. 1 MSchG). In principle, only the owner of the prior trademark can rely on these relative grounds for refusal (Art. 3 Abs. 3 MSchG).
In practice, this means: Your trademark can initially be registered even though a risk of conflict exists. The conflict then only becomes apparent later, for example through an opposition, a warning letter, or a lawsuit.
Does the IGE check for prior trademarks during filing?
No. The IGE does not check during filing whether your trademark conflicts with a prior identical or similar trademark. Conducting this clarification is up to you.
The IGE rejects a registration application among other things if formal requirements are not met, fees are missing, or absolute grounds for refusal exist (Art. 30 Abs. 2 MSchG). Absolute grounds for refusal concern, for instance, descriptive, banal, misleading, or unlawful signs. On the other hand, the relative question of whether a prior trademark stands in the way is not automatically checked.
A registration therefore does not mean that your trademark is free of conflict. It only means that the IGE did not find any grounds for refusal in the application process which it examines ex officio.
After the publication of the registration, the owner of an earlier trademark can file an opposition within three months (Art. 31 Abs. 1 MSchG, Art. 31 Abs. 2 MSchG). If the opposition is justified, the registration will be revoked in whole or in part (Art. 33 MSchG).
What does risk of confusion mean for trademarks?
Risk of confusion does not only mean that two signs are identical. It also exists if, because of the similarity, customers could believe that the goods or services originate from the same business or from economically connected businesses.
The Federal Supreme Court relies here on the overall impression that the trademark leaves in the memory of the relevant public. A junior trademark can impair the senior trademark if the public attributes the offers to the wrong trademark owner or falsely assumes an economic connection (BGE 128 III 441 E. 3.1, confirmed in BGer 4A_154/2023 E. 2.1.1).
Three points are particularly important. First, the goods or services must be compared. The closer they are to each other, the greater the risk of conflict. Second, similarity of signs must be checked. For word marks, sound, visual appearance, and meaning matter. Third, the distinctive character of the earlier trademark plays a key role. Imaginative or well-known trademarks often have a broader scope of protection than weak, more descriptive signs.
How can you check your trademark yourself?
If you want to check your trademark, it is best to start with a simple, self-guided search. This does not replace a professional similarity search, but it helps to identify obvious risks early on.
The most important starting point is the official Swiss trademark database Swissreg. There you can search for Swiss trademarks and trademark applications. Check not only the exact spelling, but also close variations. For example, if your trademark is to be called "Luniva", spellings like "Lunivia", "Lunivae", or "Luniva Swiss" can also be relevant.
Afterwards, you should check similar signs. This is precisely where many conflicts arise. A slightly different spelling or an addition like "Swiss", "Group", "Tech", "Solutions", or "Premium" is not always enough to create sufficient distance. The decisive factor is what sticks in the memory of the customers.
Equally important is a look at the goods and services. Trademarks are not protected in the abstract, but always for specific products or services. A similar name can be less problematic in a completely different area of activity than in the direct market environment.
Finally, you should also check companies, domains, and the actual use in the market. A name can be available as a domain and still conflict with a prior trademark. Conversely, a commercial register entry cannot guarantee that the designation is free under trademark law.
Is Swissreg enough for a secure trademark check?
Swissreg is an important first step, but is often not enough for a reliable conflict check. The database shows register information, but does not reliably recognize all similarly written, similarly sounding, or similarly designed trademarks.
The check is particularly demanding in the case of coined terms, abbreviations, foreign-language elements, and logos. With figurative marks, it is not just individual motifs that matter, but also style, arrangement, colors, and overall impression.
If you use the trademark only in a very limited way, a careful self-guided search can be enough for an initial assessment. But if you plan larger investments, are having packaging printed, are launching an app, or want to build up the brand long-term, a professional trademark search is significantly more sensible.
A good search does not just look for identical matches. It also assesses similar signs and classifies the risks. This is important because not every match is automatically dangerous. Conversely, a seemingly harmless match can become problematic if signs, goods, and services are close to each other.
What consequences can result from a trademark conflict?
A trademark conflict can lead to your trademark being fully or partially revoked, cancelled, or its use prohibited. In addition, costs for lawyers, proceedings, new domains, new packaging, and new marketing can arise.
The owner of an earlier trademark has the exclusive right to use the trademark to identify the protected goods or services and to dispose of it (Art. 13 Abs. 1 MSchG). In particular, she can prohibit others from using a conflicting sign on goods, packaging, in advertising, on business papers, or otherwise in the course of trade (Art. 13 Abs. 2 MSchG).
In the event of an imminent or existing infringement, it can be requested in court, among other things, that the infringement be prohibited or remedied (Art. 55 Abs. 1 MSchG). In addition, claims for damages, satisfaction, or surrender of profits remain reserved (Art. 55 Abs. 2 MSchG).
Even an already registered trademark is not definitively secure. The Federal Supreme Court has confirmed that a trademark can be removed from the trademark register via an action for cancellation or invalidity in the event of relative grounds for refusal (BGer 4A_154/2023 E. 2.1.1).
When is professional support worth it?
A professional trademark check is particularly worth it if you want to use the trademark long-term, make larger investments, or build it up as an important corporate asset.
This applies above all to new company names, product names, app names, platform names, labels, and logos. The more your visibility depends on the brand, the more important a clean check before filing is.
Ideally, you do not check only at the end of the branding process. It is better to test several name ideas early on. This way, you can filter out risky variants before you commit to a name. If you need support with the topic of trademark protection, Jurata is happy to help you at any time. You can find information on this at the service for Markenschutz.
Conclusion
Checking a trademark is one of the most important steps before filing. The IGE does not automatically check whether prior similar trademarks exist. Therefore, you should conduct your own research or have a professional check carried out before you file your trademark and build it up in the market.
Crucial are not only identical matches, but also similar signs, same or similar goods and services as well as the overall impression. Anyone who takes this step seriously significantly reduces the risk of opposition, cancellation, injunctive relief claims, and expensive rebranding.
Frequently asked questions about trademark checking
Do I have to check my trademark if the company name is still free?
Yes. A free company name does not automatically mean that everything is safe under trademark law. Company law, trademark law, and domain availability are different levels.
Can I apply for a similar trademark if I use a different logo?
Not always. A different logo can help if the overall impression creates sufficient distance. However, if the dominant word component is very similar, a risk of confusion can still exist.
What happens if no one files an opposition?
Then an important risk is reduced, but not necessarily eliminated. Under certain circumstances, prior rights can still be asserted in court later.
Should I apply for the trademark first or buy the domain first?
Many secure the matching domain early on. Legally, however, you should check before larger investments whether the name is also viable under trademark law.
