What can be protected as a trademark?
In principle, a designation may be registered as a trademark, provided it is capable of distinguishing the goods or services of an enterprise from the goods or services of other enterprises, and provided it is not inherently excluded from protection based on one of the following absolute grounds for refusal of protection:
- The designation forms part of the common domain (this applies, in particular, to designations which are descriptive for the goods or services at issues),
- the designation consists of a shape resulting exclusively from the nature of the goods, or of a shape which is technically necessary for the goods or their packaging;
- the designation is misleading (deceptive),
- the designation infringes public policy, morality, or applicable law.
Although a mark may not feature any deceptive content, it may contain elements of a descriptive nature in addition to elements which are distinctive. However, descriptive components of trademarks are not accorded trademark protection, or have at best a marginal scope of protection. In other words, the more imaginative and hence more distinctive the designation is, and the less descriptive elements it includes, the larger its scope of protection will be.
Registrable types of trademarks included, in particular, pure word marks, combined marks (combinations of word and design elements), design marks, designations which consist of combinations of numbers or letters, three-dimensional marks, and sound marks. Scent marks, are not registrable in Switzerland.
The minimum requirements for filing a trademark application in Switzerland are:
- Exact name and address of the applicant
- List of goods and services for which the mark is to be registered
- An image of the mark if it is not a pure wordmark. The image should have a resolution of at least 1000 pixels along its longest edge. If colors are irrelevant for the mark, the image can be in black and white, otherwise a color image is required.
- Date and country of priority application if convention priority is to be claimed
The following documents will usually also be required by the trademark attorney handling the application, but will not always need to be filed with the Trademark Office:
- Power of attorney (simply signed -> download power of attorney) -> Power of attorney (English)
- Priority documents (certified) in German, French, Italian or English
In which territories should a trademark be registered?
Seeking trademark protection will generally be appropriate in all jursidictions where the goods or services branded with the mark are produced and marketed; there should be a serious intention to use the mark within a time-period of around three to five years. The rights granted with a trademark registration can, once a certain time-period has passed since registration, typically only be enforced against infringing third parties if the mark has been used in the country of registration.Therefore, it will usually not be recommendable to obtain trademark registrations in countries where use of the mark is expected to never take place, or where use of the mark may be intended only as a remote eventuality. After the expiry of the grace period subsequent to registration, within which use of the mark is not compulsory, lack of trademark use will result in the trademark registration concerned being vulnerable to cancellation. In countries where periodical proof of use must be filed with the Trademark Office, absence of use may lead to the cancellation of the registration by the Office. Absence of trademark use after the expiry of the grace period will also provide grounds for interested third parties to seek cancellation of the registration based on non-use.
As soon as the applicant has determined in which countries his mark is used, or will be used, territorial trademark protection coverage must be planned and applied for by optimal combination of the various trademark application systems. For example, trademarks can be registered nationally in individual countries. In addition, numerous countries have joined the Madrid Agreement and/or the Madrid Protocol, thereby creating an international registration procedure under which trademarks with effect in the selected member countries can be filed with a single international trademark authority. For European Union member states, European Union trademark applications can be filed for a trademark registration covering the entire EU territory.
The best filing strategy in a given situation will need to be assessed on a case-by-case basis as it will depend on a plurality of issues that should be discussed with your trademark professional.
If you wish to use or register a trademark, it is advisable to carry out a search to disclose any prior identical or confusingly similar trademark registrations. A trademark search can help to analyze the risks of possible oppositions, official actions or infringement actions which may affect the envisaged new trademark.