What does trademark protection mean in Switzerland?
Trademark protection in Switzerland means that a sign is registered in the trademark register and the owner is allowed to use this sign exclusively for certain goods or services. Legally, a trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises (Art. 1 Abs. 1 MSchG).
For example, words, letters, numbers, pictures, three-dimensional shapes or combinations of such elements with colors can be considered as trademarks (Art. 1 Abs. 2 MSchG). For founders and SMEs, word marks, figurative marks and combined word-figurative marks are particularly relevant. A word mark protects the name as such. A figurative mark protects a graphic sign. A word-figurative mark protects the specific design, for example a name in a specific logo form.
Crucially, trademark rights generally arise upon registration in the register (Art. 5 MSchG). Whoever files first generally has the better position (Art. 6 MSchG). Therefore, trademark protection in Switzerland is particularly important if you use a name publicly, invest in marketing it or sell products and services under this name.
Is a commercial register entry already trademark protection?
A commercial register entry does not replace trademark protection. The company name in the commercial register primarily protects the company as a legal business name. A trademark, on the other hand, protects a sign for specific goods or services.
This is a common misconception during start-ups. A LLC or stock corporation can be registered in the commercial register and still run into trademark law problems if a similar name is already protected as a trademark for similar goods or services. Conversely, a registered company name does not automatically mean that you can forbid others from using a similar sign as a product name, logo or domain.
It becomes particularly delicate if you also sell products, run a webshop or market a service under your company name. The Federal Supreme Court has confirmed that trademark owners can take action not only against signs on products, but also against trademark-like use in business transactions, for example in advertising, on business papers, as a company name or as a domain, provided that the other requirements are met (BGer 4A_265/2020 E. 7.4.2).
Which signs cannot be protected?
Not every good marketing name is automatically a good trademark. Specifically excluded from trademark protection are signs that are in the public domain, are misleading or violate public order, morality or applicable law (Art. 2 MSchG).
For SMEs, the public domain is particularly important. Public domain signs are those that must either be kept free or are not sufficiently distinctive. Descriptive terms are therefore problematic. Anyone wishing to monopolize a purely descriptive term for their own products, for example, will often fail.
The Federal Supreme Court formulates the principle clearly: in particular, signs that are limited to indications of the type, quality, quantity, purpose, value or other characteristics of the goods or services are not eligible for protection. The decisive factor is whether the descriptive character is recognizable without any special intellectual effort and without any imagination. It is sufficient if this applies in one language region of Switzerland (BGE 145 III 178 E. 2.3.1).
For founders, this practically means: the more descriptive your name is, the weaker your protection usually is. Imaginative or independent names are often stronger under trademark law. A name that immediately explains what you do can be attractive in marketing. However, it is not always ideal as a trademark.
What specifically does a registered trademark protect?
A registered trademark gives you the exclusive right to use the trademark to identify the goods or services for which it is claimed (Art. 13 Abs. 1 MSchG). Under certain conditions, you can prohibit others from using an identical or similar sign in the course of trade (Art. 13 Abs. 2 MSchG).
However, the protection is not limitless. A trademark is always registered for specific goods and services. This is precisely why you must choose a list of goods and services when filing. Protection for a coffee brand is not automatically the same as protection for a software brand or a consulting brand.
In conflicts, the risk of confusion plays a central role. Signs are particularly problematic if they are similar to an older trademark and are intended for identical or similar goods or services, so that there is a risk of confusion (Art. 3 Abs. 1 lit. c MSchG).
The Federal Supreme Court assesses the risk of confusion based on the overall impression that the signs leave in the memory of the relevant public. It is therefore not enough to artificially break down two logos into individual parts. The decisive factor is whether customers could attribute the products or services to the wrong company or falsely assume an economic connection (BGer 4A_540/2023 E. 3.1).
What is the trademark application process at the IPI?
The trademark application in Switzerland is filed with the Swiss Federal Institute of Intellectual Property. The IPI provides the online registration via e-Trademark for this purpose. According to the IPI, the application includes in particular the sign itself and the list of goods or services for which protection is claimed.
Before applying, you should clarify three things. First, which sign you want to protect. Second, for which goods or services you need protection. Third, whether there are older trademarks that come dangerously close to your sign.
Upon application, the IPI examines in particular absolute grounds for refusal, such as a lack of distinctiveness or misleading information. However, it does not comprehensively examine whether your trademark infringes older rights of third parties. This is exactly why a preliminary trademark search is so important. If you apply without a search, it can happen that your trademark is registered, but later an older trademark owner files an opposition or takes civil action against you.
After registration, the trademark is published. Owners of older trademarks can take action against the registration if they can assert relative grounds for refusal (Art. 3 Abs. 3 MSchG).
If you need support with trademark protection, Jurata is always happy to help: Markenschutz.
How much does trademark protection cost in Switzerland?
The official costs for trademark protection in Switzerland are easy to plan for many SMEs. According to the official Gebührenübersicht des IGE, the application fee for a Swiss trademark is CHF 450. For electronic filing, the IPI grants a discount of CHF 100. The application basically covers the first three classes of goods or services. Additional fees may apply for extra classes. The renewal for another ten years costs CHF 550 according to the IPI.
These fees are only part of the overall costs. There may also be costs for a trademark search, a legal assessment, the drafting of the list of goods and services or representation in opposition proceedings.
Especially when it comes to trademark protection in Switzerland, it is worth looking not only at the application fee. A poorly chosen class, a list that is too narrow, or an unresearched conflict can end up being significantly more expensive later on than clean preparation.
How long does a trademark last?
A Swiss trademark is valid for ten years from the filing date (Art. 10 Abs. 1 MSchG). It can be renewed for further periods of ten years if a renewal application is submitted and the required fees are paid (Art. 10 Abs. 2 MSchG).
The renewal application must be submitted within the last twelve months before the expiry of the validity period. At the latest, it is still possible within six months after expiry (Art. 10 Abs. 3 MSchG).
This makes trademarks particularly attractive for companies. Unlike certain other intellectual property rights, a trademark can generally be renewed again and again. The prerequisite, however, is that it is strategically maintained and renewed on time.
Do I really have to use the trademark?
Yes. A trademark is not meant to block signs in reserve. It is protected to the extent that it is used in connection with the goods and services for which it is claimed (Art. 11 Abs. 1 MSchG).
After a certain grace period, non-use can lead to the trademark owner no longer being able to assert their right. Anyone who does not use the trademark for an uninterrupted period of five years can generally no longer enforce the trademark right, unless there are important reasons for non-use (Art. 12 Abs. 1 MSchG).
The Federal Supreme Court emphasizes that this obligation to use is intended to prevent trademarks from being filed merely in reserve, thereby artificially inflating the register or hindering the creation of new trademarks (BGer 4A_265/2020 E. 6.3.2).
For SMEs, this means: do not register your trademark broadly, but where you seriously want to use it. An application that is too broad may sound secure at first, but can become vulnerable later on.
When should an SME register a trademark?
You should register a trademark at the latest when you seriously want to enter the market under a specific name. Trademark protection in Switzerland is particularly important if you are already investing in a logo, packaging, website, advertising, social media, product development or sales.
A trademark application also makes sense before a financing round, an expansion, a franchise model or a marketplace launch. Investors, sales partners and platforms are increasingly paying attention to whether the most important signs are legally secured.
It is even better to clarify the trademark issue before the public launch. This allows you to recognize early on whether your desired name is legally risky. Rebranding only after months or years usually costs not only money, but also trust and recognition.
Frequently asked questions about trademark protection in Switzerland
Does a Swiss trademark also protect abroad?
No. Trademark protection is territorial. A Swiss trademark basically protects in Switzerland. If you also want to use your trademark in the EU, the USA or other markets, you need additional protection abroad or an international trademark strategy.
Can I register a trademark even before the company is founded?
Yes, a trademark application can also make sense before the actual company is founded. However, it is important that the ownership is cleanly planned. If a LLC or stock corporation is to use the trademark later, it must be clarified whether the trademark is to be transferred or registered appropriately from the start.
Is a domain sufficient as protection?
No. A domain does not give you a trademark. It can be practically important, but it does not replace registration in the trademark register. In addition, a domain can be problematic under trademark law if it collides with an older trademark.
What is the most common mistake in trademark protection?
The most common mistake is to build up the name publicly first and only check later whether it is protectable and free. Trademark protection in Switzerland should therefore not only come after the launch, but should be part of the brand and start-up strategy.
