What does a trademark protect anyway?
A trademark protects a sign that allows customers to distinguish your goods or services from other offerings. This can be a word, a logo, a number, a sequence of letters, a shape, or a combination with colors (Art. 1 Abs. 1 MSchG, Art. 1 Abs. 2 MSchG).
The most important point is simple. A trademark does not protect your business idea as such, but rather the sign under which you appear on the market. For example, anyone who sells a new drink does not protect the recipe or the business model with the trademark, but rather the name, the logo, or another identifying sign of the drink.
In Switzerland, trademark rights arise with registration in the trademark register (Art. 5 MSchG). Precisely because of this, registration is very important. Without registration, a sign can indeed become factually known, but it lacks clear registration protection.
When is a trademark registration in Switzerland particularly worthwhile?
A trademark registration in Switzerland is particularly worthwhile if your name, your logo, or your product appearance is to become an important asset of your business. The more you invest in branding, website, packaging, advertising, social media, or sales, the greater the risk if a third party later appears with a similar sign or even beats you to it.
Registration is particularly sensible if you sell products or services under a specific name, build a scalable offer, plan franchise or licensing models, want to convince investors, or want to sell your company later. In all these cases, a registered trademark is more than just a shield. It is an exploitable right that documents who owns the sign.
A look at trademark protection is also worthwhile for start-ups at an early stage. Anyone who only realizes after the launch that the chosen name is already legally problematic under trademark law must, in the worst case, rebuild the website, packaging, social media channels, domains, and marketing materials. This is often more expensive than a clean review before registration.
If you need support with the topic of trademark protection, Jurata is happy to help you at any time: Marke schützen mit Jurata.
What specifically does registration bring?
The registration gives you the exclusive right to use and dispose of the trademark for the registered goods or services (Art. 13 Abs. 1 MSchG). In particular, you can prohibit others from using an identical or confusingly similar sign in the course of trade, for example on products, packaging, in advertising, or for services (Art. 13 Abs. 2 MSchG).
In practical terms, this means: the trademark gives you a better starting position if someone appears with a similar name. You then do not just have to argue that you have been using the name for longer. You can rely on a registered right.
However, it is important that the protection always refers to the registered sign and the claimed goods or services. A trademark for software does not automatically protect clothing, food, or consulting services either. This is precisely why the list of goods and services is central during registration (Art. 28 Abs. 2 lit. c MSchG).
When is a registration less sensible?
Not every idea needs to be registered as a trademark immediately. Registration is less sensible if the sign has not yet been determined, if you are unlikely to use it seriously, or if the name is highly descriptive.
Excluded from trademark protection are, among others, signs that belong to the public domain, are misleading, or violate applicable law (Art. 2 lit. a MSchG, Art. 2 lit. c MSchG, Art. 2 lit. d MSchG). A purely descriptive term like «Schnelle Buchhaltung» for accounting software can therefore be problematic because competitors should fundamentally also be allowed to use such information.
Pure reserve trademarks are also delicate. The Federal Supreme Court emphasizes that a trademark is only protected after the statutory grace period has expired if it is actually used for the claimed goods or services. The requirement of use is intended to prevent trademarks from being filed merely in reserve and blocking new trademarks (BGE 139 III 424 E. 2.2.1). After five years of non-use, the trademark right can in principle no longer be asserted, unless there are important reasons (Art. 12 Abs. 1 MSchG).
A registration is therefore particularly worthwhile if you really want to use the sign or if a serious use is planned in the foreseeable future.
Why is a trademark search important before registration?
A trademark registration in Switzerland is not a free pass. The IGE does indeed examine formal requirements and absolute grounds for exclusion. It rejects an application, among other things, if absolute grounds for exclusion exist (Art. 30 Abs. 2 lit. c MSchG). However, older rights of third parties are not comprehensively cleared ex officio. Therefore, the IGE recommends a trademark search.
The risk lies primarily with older trademarks. Excluded from trademark protection are signs that are identical or similar to an older trademark and are intended for identical or similar goods or services, if this creates a risk of confusion (Art. 3 Abs. 1 lit. a MSchG, Art. 3 Abs. 1 lit. b MSchG, Art. 3 Abs. 1 lit. c MSchG).
The Federal Supreme Court describes the risk of confusion like this: The decisive factor is whether, because of the similarity of the signs, the relevant public attributes goods or services to the wrong company or at least assumes incorrect economic relationships (BGer 4A_154/2023 E. 2.1.1). The overall impression that remains in the memory of the customers is decisive (BGer 4A_154/2023 E. 2.1.1).
A search is therefore not a empty formality. It helps you to check whether your desired sign is legally viable before you invest money in branding and communication.
How much does a trademark registration cost in Switzerland?
According to information from the Swiss Federal Institute of Intellectual Property, the basic fee for a Swiss trademark registration is currently CHF 450. For electronic registration via e-trademark, the IGE grants a discount of CHF 100. The registration is valid for ten years and can then be renewed for additional periods of ten years (IGE FAQ Marken, Art. 10 Abs. 1 MSchG, Art. 10 Abs. 2 MSchG).
In addition to the official fee, further costs may arise. Typical are costs for a trademark search, for the preparation of the list of goods and services, or for legal support with delicate signs. If the trademark is to be examined quickly, accelerated processing can trigger additional fees.
Viewed over ten years, the official costs are manageable. The real question is therefore usually not whether the registration is expensive, but whether your sign is business-critical enough to secure it.
When is the right time for the registration?
The best time is usually before the public launch or at the latest before you make major marketing expenditures. As soon as a name becomes visible, the risk increases that conflicts arise or someone registers a similar sign.
For international plans, timing is particularly important. Anyone who files a trademark for the first time in a member state of the Paris Convention can claim the priority of the first filing for a later filing in Switzerland within six months (Art. 7 Abs. 1 MSchG). Conversely, a Swiss registration can be relevant as a starting point for subsequent foreign registrations. Anyone who thinks internationally from the outset should therefore not plan the trademark strategy only after growth.
What mistakes often happen during registration?
A common mistake is a name that is too descriptive. Such signs often seem obvious in marketing, but are legally weak or not registrable at all. A second mistake is a list of goods and services that is too narrow or too broad. Too narrow can exclude future fields of business. Too broad can create unnecessary points of attack if the trademark is not used later.
A third mistake is registration without a search. Precisely because the risk of confusion exists not only with identical signs, but also with similar signs for the same or similar offerings, a superficial Google search can be too little.
A fourth mistake is subsequent use in a highly modified form. The Federal Supreme Court states that the trademark must in principle be used as it is registered. A deviant use can only preserve rights if the distinctive character is maintained (BGE 139 III 424 E. 2.2.2). Anyone who registers a logo and later uses a significantly different logo should therefore check whether a new registration is sensible.
Conclusion: When is the trademark registration really worthwhile?
A trademark registration in Switzerland is worthwhile if your sign creates recognition, if you invest in the market appearance, and if you want to prevent third parties from using a similar sign for similar offerings. The more the name or logo contributes to the economic value of your company, the more important the formal protection becomes.
Before registering, you should clarify whether the sign is capable of protection at all, whether older rights conflict, and for which goods or services you need protection. A well-prepared registration not only protects your branding, but also prevents expensive corrections after the launch.
Frequently asked questions about trademark registration in Switzerland
Do I have to additionally protect my company name as a trademark?
Not always, but it is often sensible. The commercial register entry does not automatically protect in the same way as a trademark. If your company name is also used as a market appearance, product name, or service identification, an additional trademark registration can be sensible.
Is a Swiss trademark also valid abroad?
No. Trademark rights are territorial. A Swiss trademark basically protects in Switzerland. If you also want to be active in the EU, in the USA, or in other countries, you need a suitable international or foreign protection strategy.
Can I register a trademark before my product is finished?
Yes, that can be sensible. However, you should plan a serious use. If the trademark is not used for five years after the expiry of the opposition period or after the conclusion of an opposition proceeding, this can have legal consequences (Art. 12 Abs. 1 MSchG).
Is it enough if I register a domain?
No. A domain registration does not replace a trademark. It primarily secures you the technical address. However, it does not automatically give you an exclusive trademark right to the name.
