Federal Act
on the Protection of Trade Marks and Indications of Source
(Trade Mark Protection Act, TmPA)

¹ A trade mark is a sign cap­able of dis­tin­guish­ing the goods or ser­vices of one un­der­tak­ing from those of oth­er un­der­tak­ings.

² Trade marks may, in par­tic­u­lar, be words, let­ters, nu­mer­als, fig­ur­at­ive rep­res­ent­a­tions, three-di­men­sion­al shapes or com­bin­a­tions of such ele­ments with each oth­er or with col­ours.

Ex­cluded from trade mark pro­tec­tion are:

a.

signs that are in the pub­lic do­main, ex­cept where they have be­come es­tab­lished as a trade mark through use for the goods or ser­vices for which they are be­ing claimed.

b.

shapes that con­sti­tute the nature of the goods them­selves or shapes of the goods or their pack­aging that are tech­nic­ally ne­ces­sary.

c.

mis­lead­ing signs;

d.

signs con­trary to pub­lic policy, mor­al­ity or ap­plic­able law.

¹ Also ex­cluded from trade mark pro­tec­tion are signs that are:

a.

identic­al to an earli­er trade mark and are in­ten­ded for the same goods or ser­vices;

b.

identic­al to an earli­er trade mark and in­ten­ded for sim­il­ar goods or ser­vices such that a like­li­hood of con­fu­sion res­ults.

c.

sim­il­ar to an earli­er trade mark and in­ten­ded for the same or sim­il­ar goods or ser­vices such that a like­li­hood of con­fu­sion res­ults.

² An earli­er trade mark is:

a.

a filed or re­gistered trade mark that gives rise to a right of pri­or­ity un­der this Act (Art. 6-8).

b.

a trade mark that is well known in Switzer­land with­in the mean­ing of Art­icle 6^bisof the Par­is Con­ven­tion for the Pro­tec­tion of In­dus­tri­al Prop­erty of 20 March 1883 (Par­is Con­ven­tion)⁴ at the time of fil­ing the sign re­ferred to in para­graph 1.

³ The grounds for re­fus­al un­der this Art­icle may only be in­voked by the pro­pri­et­or of the earli­er trade mark.

Trade marks re­gistered in the name of agents, rep­res­ent­at­ives or oth­er au­thor­ised users without the con­sent of the pro­pri­et­or, or trade marks which re­main entered in the Re­gister after the with­draw­al of such con­sent, are also not pro­tec­ted.

A trade mark right is es­tab­lished on entry in the Re­gister.

A trade mark right be­longs to the per­son who first files the trade mark.

¹ Where a trade mark is first duly filed in an­oth­er Mem­ber State of the Par­is Con­ven­tion⁵ or with ef­fect in such a Mem­ber State, the ap­plic­ant or suc­cessor in title may claim the date of the first fil­ing for the fil­ing of the same trade mark in Switzer­land, provided the fil­ing in Switzer­land takes place with­in six months of the date of the first fil­ing.

² The first fil­ing in a state that grants re­cipro­city to Switzer­land has the same ef­fect as the first fil­ing in a Mem­ber State of the Par­is Con­ven­tion.

Any per­son who ex­hib­its goods or ser­vices bear­ing a trade mark at an of­fi­cial or of­fi­cially re­cog­nised ex­hib­i­tion un­der the Con­ven­tion of 22 Novem­ber 1928⁶ Re­lat­ing to In­ter­na­tion­al Ex­hib­i­tions in a Mem­ber State of the Par­is Con­ven­tion⁷, may claim the open­ing date of the ex­hib­i­tion for fil­ing the ap­plic­a­tion provided that the trade mark is filed with­in six months of this date.

¹ Any per­son who claims pri­or­ity un­der the Par­is Con­ven­tion⁸ or ex­hib­i­tion pri­or­ity must file a de­clar­a­tion of pri­or­ity with the Swiss Fed­er­al In­sti­tute of In­tel­lec­tu­al Prop­erty (IPI). The IPI may re­quire the sub­mis­sion of a pri­or­ity doc­u­ment.⁹

² The claim is for­feited if the time lim­its and form­al re­quire­ments laid down by the Or­din­ance are not com­plied with.

³ Re­gis­tra­tion of pri­or­ity is merely a pre­sump­tion in fa­vour of the pro­pri­et­or of the trade mark.

¹ A re­gis­tra­tion is val­id for 10 years from the date of fil­ing the ap­plic­a­tion.

² A re­gis­tra­tion will be re­newed for fur­ther peri­ods of ten years if an ap­plic­a­tion for re­new­al is sub­mit­ted and the fees as set out in the Or­din­ance are paid.¹⁰

³ The ap­plic­a­tion for re­new­al must be sub­mit­ted to the IPI with­in the last 12 months pri­or to the ex­piry of the term of valid­ity, but not later than six months after its ex­piry.¹¹

⁴ ...¹²

¹ A trade mark is pro­tec­ted if it is used in re­la­tion to the goods or ser­vices for which it is claimed.

² Use in a man­ner not sig­ni­fic­antly dif­fer­ent from the re­gistered trade mark and use for ex­port pur­poses also con­sti­tute use of the trade mark.

³ Use of the trade mark with the con­sent of the pro­pri­et­or is con­sidered to be use by the pro­pri­et­or him­self.

¹ Where the pro­pri­et­or has not used the trade mark in re­la­tion to the goods or ser­vices for which it is claimed for an un­in­ter­rup­ted peri­od of five years fol­low­ing the ex­piry of the op­pos­i­tion peri­od with no op­pos­i­tion hav­ing been filed or upon con­clu­sion of op­pos­i­tion pro­ceed­ings, he may no longer as­sert his right to the trade mark, un­less there are prop­er reas­ons for non-use.

² If use of the trade mark is com­menced or re­sumed after more than five years, the right to the trade mark is re­stored with ef­fect from the ori­gin­al pri­or­ity date, un­less non-use of the trade mark has been in­voked un­der para­graph 1 pri­or to its com­mence­ment or re­sump­tion of use.

³ Any per­son who in­vokes non-use of a trade mark is re­quired to sub­stan­ti­ate his claim; evid­ence of use is re­quired to be provided by the pro­pri­et­or of the trade mark.

¹ A trade mark right con­fers on the pro­pri­et­or the ex­clus­ive right to use the trade mark to identi­fy the goods or ser­vices for which it is claimed and to dis­pose of it.

² The pro­pri­et­or of a trade mark may pro­hib­it oth­ers from us­ing a sign that is ex­cluded from trade mark pro­tec­tion un­der Art­icle 3 para­graph 1, in par­tic­u­lar, from:

a.

af­fix­ing the sign to goods or their pack­aging;

b.

of­fer­ing goods, pla­cing them on the mar­ket or stor­ing them for such pur­poses un­der the sign;

c.

of­fer­ing or provid­ing ser­vices un­der the sign;

d.

im­port­ing, ex­port­ing or car­ry­ing in trans­it goods un­der the sign;¹³

e.

us­ing the sign on busi­ness pa­pers, in ad­vert­ising, or oth­er­wise in the course of trade.

^2bis The pro­pri­et­or of the trade mark may also as­sert the rights un­der para­graph 2 let­ter d if the im­port, ex­port or trans­it of com­mer­cially man­u­fac­tured goods is car­ried out for private pur­poses.¹⁴

³ The pro­pri­et­or of the trade mark may also as­sert the rights un­der this Art­icle against au­thor­ised users in terms of Art­icle 4.¹⁵

¹ The pro­pri­et­or of a trade mark may not pro­hib­it an­oth­er per­son from con­tinu­ing to use a sign to the same ex­tent as already pre­vi­ously used pri­or to the fil­ing of the ap­plic­a­tion.

² This right to con­tin­ued use may only be as­signed to­geth­er with the un­der­tak­ing.

¹ The pro­pri­et­or of a fam­ous trade mark may pro­hib­it oth­ers from us­ing his trade mark for any type of goods or ser­vices if such use threatens the dis­tinct­ive­ness of the trade mark or ex­ploits or dam­ages its repu­ta­tion.

² Rights ac­quired be­fore the trade mark be­came fam­ous re­main un­af­fected.

Where a re­gistered trade mark is re­pro­duced in a dic­tion­ary, in an­oth­er ref­er­ence work or in a sim­il­ar work without ref­er­ence to its re­gis­tra­tion, the pro­pri­et­or of the trade mark may re­quire that the pub­lish­er, ed­it­or or dis­trib­ut­or of the work in­clude a cor­res­pond­ing ref­er­ence, at the latest in a re­print.

¹ The pro­pri­et­or may as­sign his trade mark in whole or in part for the goods or ser­vices for which it has been claimed.

² The as­sign­ment is only val­id if evid­enced in writ­ing. It is only ef­fect­ive in re­la­tion to third parties who are act­ing in good faith once it has been entered in the Re­gister.

³ Ac­tions un­der this Act may be brought against the pre­vi­ous pro­pri­et­or up to the entry of the as­sign­ment in the Re­gister.

⁴ Un­less oth­er­wise agreed, the as­sign­ment of an un­der­tak­ing also in­cludes the as­sign­ment of its trade marks.

¹ The pro­pri­et­or of a trade mark may at any time re­quest the di­vi­sion of a re­gis­tra­tion or an ap­plic­a­tion for re­gis­tra­tion.¹⁷

² The goods and ser­vices are di­vided between the di­vi­sion­al ap­plic­a­tions or di­vi­sion­al re­gis­tra­tions.

³ Di­vi­sion­al ap­plic­a­tions or re­gis­tra­tions re­tain the fil­ing date and pri­or­ity date of the ori­gin­al ap­plic­a­tion or ori­gin­al re­gis­tra­tion.

¹ The pro­pri­et­or of a trade mark may per­mit oth­ers to use the trade mark for the goods or ser­vices for which it is claimed, in whole or in part, and for the whole ter­rit­ory or a part of Switzer­land only.

² The li­cence shall be entered in the Re­gister at the re­quest of one of the parties. It then be­comes bind­ing on any rights to the trade mark sub­sequently ac­quired.

¹ A trade mark may be sub­ject to usu­fruct, pledge or com­puls­ory en­force­ment meas­ures.

² Usu­fruct and pledges only have ef­fect against third parties act­ing in good faith if they are entered in the Re­gister.

¹ ...¹⁸

² Where in­ter­na­tion­al treat­ies bind­ing on Switzer­land grant more ex­tens­ive rights than this Act, such rights also ap­ply to Swiss na­tion­als.

¹ A guar­an­tee mark is a sign that is used by sev­er­al un­der­tak­ings un­der the su­per­vi­sion of the pro­pri­et­or of the mark and which serves to guar­an­tee the qual­ity, geo­graph­ic­al ori­gin, the meth­od of man­u­fac­ture or oth­er char­ac­ter­ist­ics com­mon to goods or ser­vices of such un­der­tak­ings.

² A guar­an­tee mark may not be used for goods or ser­vices of the pro­pri­et­or of the mark or of an un­der­tak­ing with which he has close eco­nom­ic ties.

³ In re­turn for equit­able re­mu­ner­a­tion, the pro­pri­et­or of the guar­an­tee mark must al­low any per­son to use it for goods or ser­vices that pos­sess the com­mon char­ac­ter­ist­ics guar­an­teed un­der the reg­u­la­tions gov­ern­ing the use of the mark.

A col­lect­ive mark is a sign of an as­so­ci­ation of man­u­fac­tur­ing, trad­ing or ser­vice un­der­tak­ings which serves to dis­tin­guish the goods or ser­vices of the mem­bers of the as­so­ci­ation from those of oth­er un­der­tak­ings.

¹ The ap­plic­ant of a guar­an­tee or col­lect­ive mark must file reg­u­la­tions gov­ern­ing the use of the mark with the IPI¹⁹.

² The reg­u­la­tions for guar­an­tee marks shall des­ig­nate the com­mon char­ac­ter­ist­ics of the goods or ser­vices which the mark is in­ten­ded to guar­an­tee; they shall also provide for an ef­fect­ive con­trol of the use of the mark and for ap­pro­pri­ate sanc­tions.

³ The reg­u­la­tions for col­lect­ive marks shall des­ig­nate those un­der­tak­ings that are en­titled to use the mark.

⁴ The reg­u­la­tions may not be con­trary to pub­lic policy, mor­al­ity or ap­plic­able law.

The reg­u­la­tions must be ap­proved by the IPI. Ap­prov­al will be gran­ted if the re­quire­ments un­der Art­icle 23 are ful­filled.

Where the reg­u­la­tions do not ful­fil or no longer ful­fil the re­quire­ments of Art­icle 23 and the pro­pri­et­or of the mark does not rem­edy the situ­ation with­in the time lim­it de­term­ined by the court, the re­gis­tra­tion of the mark be­comes null and void on ex­piry of this time lim­it.

Where the pro­pri­et­or of the mark tol­er­ates re­peated use of a guar­an­tee or col­lect­ive mark that in­fringes the main pro­vi­sions of the reg­u­la­tions and he does not rem­edy the situ­ation with­in the time lim­it de­term­ined by the court, the re­gis­tra­tion of the mark be­comes null and void on ex­piry of this time lim­it.

The as­sign­ment of a guar­an­tee or col­lect­ive mark and the grant of li­cences with re­spect to col­lect­ive marks are only val­id if entered in the Re­gister.

By way of derog­a­tion from Art­icle 2 let­ter a, a geo­graph­ic­al mark may be re­gistered for:

a.²¹

an ap­pel­la­tion of ori­gin or a geo­graph­ic­al in­dic­a­tion re­gistered un­der Art­icle 16 of the Ag­ri­cul­ture Act of 29 April 1998²²(Ag­ricA), or a geo­graph­ic­al in­dic­a­tion re­gistered un­der Art­icle 50b of this Act;

b.

an ap­pel­la­tion d’ori­gine con­trôlée pro­tec­ted un­der Art­icle 63 Ag­ricA or a for­eign wine de­nom­in­a­tion which meets the re­quire­ments of Art­icle 63 Ag­ricA;

c.

an in­dic­a­tion of source that is the sub­ject mat­ter of a Fed­er­al Coun­cil or­din­ance un­der Art­icle 50 para­graph 2, or a for­eign in­dic­a­tion of source that is based on an equi­val­ent for­eign reg­u­la­tion.

The re­gis­tra­tion of a geo­graph­ic­al mark may be re­ques­ted by:

a.

the group that has ob­tained the re­gis­tra­tion of the ap­pel­la­tion of ori­gin or the geo­graph­ic­al in­dic­a­tion, or where such group no longer ex­ists, the rep­res­ent­at­ive group deal­ing with the pro­tec­tion of this ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion;

b.

the Swiss can­ton that pro­tects the ap­pel­la­tion d’ori­gine con­trôlée or the for­eign au­thor­ity re­spons­ible for the reg­u­la­tion of wine de­nom­in­a­tions cor­res­pond­ing to Art­icle 63 Ag­ricA²³, as well as the group that ob­tained the pro­tec­tion of such a for­eign wine de­nom­in­a­tion;

c.

the um­brella or­gan­isa­tion of an eco­nom­ic sec­tor for which the Fed­er­al Coun­cil has en­acted an or­din­ance based on Art­icle 50 para­graph 2 or which acts on the basis of on an equi­val­ent for­eign reg­u­la­tion.

¹ The ap­plic­ant for a geo­graph­ic­al mark must file reg­u­la­tions gov­ern­ing the use of the mark with the IPI.

² The reg­u­la­tions must cor­res­pond to the product spe­cific­a­tion or the ap­plic­able pro­vi­sions; they may not provide for re­mu­ner­a­tion in ex­change for use of the geo­graph­ic­al mark.

¹ A geo­graph­ic­al mark may be used by any per­son provided that the re­quire­ments of the reg­u­la­tions are ful­filled.

² The pro­pri­et­or of a geo­graph­ic­al mark may pro­hib­it oth­ers from us­ing the mark in the course of trade for identic­al or com­par­able goods where such use con­tra­venes the reg­u­la­tions.

¹ By way of derog­a­tion from Art­icles 17 and 18, a geo­graph­ic­al mark may not be trans­ferred or li­censed.

² By way of derog­a­tion from Art­icle 31, the pro­pri­et­or of a geo­graph­ic­al mark may not op­pose the re­gis­tra­tion of a trade mark.

³ The pro­vi­sions gov­ern­ing the use of the trade mark and con­sequences of non-use un­der Art­icles 11 and 12 do not ap­ply.

¹ Any per­son may file a trade mark ap­plic­a­tion.

² When fil­ing an ap­plic­a­tion with the IPI, the fol­low­ing must be sub­mit­ted:

a.

an ap­plic­a­tion for re­gis­tra­tion with de­tails of the name or com­pany name of the ap­plic­ant;

b.

a rep­res­ent­a­tion of the trade mark;

c.

a list of goods or ser­vices for which the trade mark is to be claimed.

³ When fil­ing an ap­plic­a­tion, the rel­ev­ant fees pre­scribed in the Or­din­ance must be paid.²⁴

⁴ ...²⁵

¹ A trade mark is con­sidered to have been filed once the doc­u­ments re­ferred to in Art­icle 28 para­graph 2 have been sub­mit­ted.

² If, after fil­ing an ap­plic­a­tion, a trade mark is re­placed or es­sen­tial ele­ments of it are mod­i­fied or if the list of goods or ser­vices is ex­ten­ded, then the date of fil­ing is con­sidered to be the day on which those modi­fic­a­tions were sub­mit­ted.

¹ The IPI shall dis­miss an ap­plic­a­tion for re­gis­tra­tion if it does not ful­fil the re­quire­ments of Art­icle 28 para­graph 2.

² It shall re­ject the ap­plic­a­tion for re­gis­tra­tion if:

a.

it does not ful­fil the form­al re­quire­ments laid down in this Act or in the Or­din­ance;

b.

the pre­scribed fees have not been paid;

c.

ab­so­lute grounds for re­fus­al ex­ist;

d.

the guar­an­tee or col­lect­ive mark does not ful­fil the re­quire­ments of Art­icles 21–23.

e.²⁶

the geo­graph­ic­al mark does not ful­fil the re­quire­ments of Art­icles 27a –27c.

³ It shall re­gister the trade mark if no grounds for re­fus­al ex­ist.

¹ The pro­pri­et­or of an earli­er trade mark may file an op­pos­i­tion to a re­gis­tra­tion on the basis of Art­icle 3 para­graph 1.

^1bis He may not file an op­pos­i­tion to a re­gis­tra­tion of a geo­graph­ic­al mark.²⁷

² The op­pos­i­tion must be sub­mit­ted in writ­ing to the IPI with a state­ment of reas­ons with­in three months of pub­lic­a­tion of the re­gis­tra­tion. The op­pos­i­tion fee must also be paid with­in this time lim­it.

If the de­fend­ant claims non-use of the earli­er mark un­der Art­icle 12 para­graph 1, the op­pos­ing party must provide prima facieevid­ence of the use of his trade mark or prop­er reas­ons for non-use.

If the op­pos­i­tion is jus­ti­fied, the re­gis­tra­tion shall be re­voked in whole or in part; if this is not the case, the op­pos­i­tion shall be re­jec­ted.

With its de­cision on the op­pos­i­tion, the IPI shall de­term­ine wheth­er and to what ex­tent the costs of the suc­cess­ful party shall be com­pensated by the un­suc­cess­ful party.

The IPI shall can­cel a trade mark re­gis­tra­tion in whole or in part if:

a.

the pro­pri­et­or re­quests the can­cel­la­tion;

b.

the re­gis­tra­tion has not been re­newed;

c.

the re­gis­tra­tion has been de­clared null and void in a fi­nal court de­cision;

d.²⁹

the pro­tec­ted ap­pel­la­tion of ori­gin or the pro­tec­ted geo­graph­ic­al in­dic­a­tion on which the geo­graph­ic­al mark is based is can­celled;

e.³⁰

a re­quest for can­cel­la­tion is ap­proved.

¹ Any per­son may file a re­quest for can­cel­la­tion of the trade mark with the IPI on the grounds of non-use in ac­cord­ance with Art­icle 12 para­graph 1.

² The re­quest may be filed at the earli­est:

a.

if no op­pos­i­tion has been filed: five years fol­low­ing the ex­piry of the op­pos­i­tion peri­od;

b.

in the event of op­pos­i­tion pro­ceed­ings: five years after the con­clu­sion of op­pos­i­tion pro­ceed­ings.

³ The re­quest is deemed to have been filed as soon as the ap­pro­pri­ate fee has been paid.

¹ The IPI shall re­ject the re­quest, if:

a.

the ap­plic­ant fails to show cred­ible non-use of the trade mark; or

b.

the pro­pri­et­or of the trade mark shows cred­ible use of the trade mark or prop­er reas­ons for its non-use.

² Where cred­ible non-use is shown for only some of the goods or ser­vices claimed, the IPI shall ap­prove the re­quest only to the ex­tent there­of.

³ With the de­cision on the re­quest, the IPI shall de­term­ine wheth­er and to what ex­tent the costs of the suc­cess­ful party shall be re­im­bursed by the un­suc­cess­ful party.

The Fed­er­al Coun­cil shall en­act rules gov­ern­ing the de­tails of this pro­ced­ure.

The IPI shall main­tain the Trade Mark Re­gister.

¹ The IPI shall pub­lish:

a.

the re­gis­tra­tion of trade marks (Art. 30 para. 3);

b.

the re­new­al of trade mark re­gis­tra­tions (Art. 10 para. 2);

c.

the re­voc­a­tion of trade mark re­gis­tra­tions (Art. 33);

d.

the can­cel­la­tion of trade mark re­gis­tra­tions (Art. 35);

² The Fed­er­al Coun­cil shall de­term­ine which ad­di­tion­al entries in the Re­gister are to be pub­lished.

³ The IPI shall de­term­ine the or­gan of pub­lic­a­tion.³⁶

¹ Any per­son may in­spect the Re­gister, ob­tain in­form­a­tion on its con­tents and re­quest ex­tracts from it.

² In ad­di­tion, any per­son may in­spect the files of a re­gistered trade mark.

³ The Fed­er­al Coun­cil shall reg­u­late the cases in which in­spec­tion of the dossier is per­mit­ted pri­or to the re­gis­tra­tion of a trade mark.

¹ The Fed­er­al Coun­cil may au­thor­ise the IPI to reg­u­late elec­tron­ic com­mu­nic­a­tion in ac­cord­ance with the gen­er­al pro­vi­sions on the ad­min­is­tra­tion of fed­er­al justice.

² The dossier and the files may be main­tained and stored in elec­tron­ic form.

³ The Trade Mark Re­gister may be main­tained in elec­tron­ic form.

⁴ The IPI may make its data­base ac­cess­ible, par­tic­u­larly on­line, to third parties; it may de­mand re­mu­ner­a­tion for this ser­vice.

⁵ The IPI’s pub­lic­a­tions may be pro­duced in elec­tron­ic form; the elec­tron­ic ver­sion, however, is only au­thor­it­at­ive if the data is ex­clus­ively pub­lished in elec­tron­ic form.

¹ If the ap­plic­ant or the rights hold­er fails to ob­serve a time lim­it re­quired by the IPI, he may file a re­quest with the lat­ter for fur­ther pro­cessing. Art­icle 24 para­graph 1 of the Fed­er­al Act of 20 Decem­ber 1968³⁸ on Ad­min­is­trat­ive Pro­ced­ure re­mains re­served.³⁹

² The re­quest must be filed with­in two months of the ap­plic­ant re­ceiv­ing no­tice of the ex­piry of the time lim­it, and at the latest with­in six months of ex­piry of the said time lim­it; with­in this time lim­it, the omit­ted act must be car­ried out in full and the fees as set out in the Or­din­ance paid.⁴⁰

³ If the re­quest is ap­proved, this will have the ef­fect of restor­ing the situ­ation that would have res­ul­ted from car­ry­ing out the act with­in the time lim­it.

⁴ Fur­ther pro­cessing is ruled out in the case of fail­ure to ob­serve:

a.

time lim­its for fil­ing a re­quest for fur­ther pro­cessing (para. 2);

b.

time lim­its for claim­ing pri­or­ity un­der Art­icles 7 and 8;

c.

the time lim­it for fil­ing op­pos­i­tion un­der Art­icle 31 para­graph 2;

d.⁴¹

the time lim­it for fil­ing an ap­plic­a­tion for re­new­al un­der Art­icle 10 para­graph 3;

e.⁴²

the time lim­its in can­cel­la­tion pro­ceed­ings un­der Art­icles 35a–35c.

Any per­son who is party to an ad­min­is­trat­ive pro­ced­ure un­der this Act but is not dom­i­ciled or does not have a re­gistered of­fice in Switzer­land must des­ig­nate an ad­dress for ser­vice in Switzer­land un­less in­ter­na­tion­al law or the com­pet­ent for­eign body per­mits the au­thor­ity to serve doc­u­ments dir­ectly in the state con­cerned.

² The IPI is en­titled to de­clare to the com­pet­ent for­eign body that dir­ect ser­vice is per­mit­ted in Switzer­land in in­tel­lec­tu­al prop­erty mat­ters provided Switzer­land is gran­ted re­cip­roc­al rights.

¹ In ad­di­tion to the cases re­ferred to in this Act, fees are pay­able for of­fi­cial ac­tions in re­sponse to spe­cif­ic re­quests.

² ...⁴⁴

¹ This Chapter ap­plies to in­ter­na­tion­al re­gis­tra­tions un­der the Mad­rid Agree­ment Con­cern­ing the In­ter­na­tion­al Re­gis­tra­tion of Marks of 14 Ju­ly 1967⁴⁶ (the Mad­rid Agree­ment) and the Pro­tocol of 27 June 1989⁴⁷ re­lat­ing to the Mad­rid Agree­ment con­cern­ing the In­ter­na­tion­al Re­gis­tra­tion of Marks (the Mad­rid Pro­tocol) that are done through the in­ter­me­di­ary of the IPI or which have ef­fect in Switzer­land.

² The oth­er pro­vi­sions of this Act ap­ply ex­cept where the Mad­rid Agree­ment, the Mad­rid Pro­tocol or this Chapter provide oth­er­wise.

¹ It is pos­sible to re­quest the fol­low­ing through the in­ter­me­di­ary of the IPI:

a.

the in­ter­na­tion­al re­gis­tra­tion of a trade mark provided that Switzer­land is the coun­try of ori­gin in ac­cord­ance with Art­icle 1 para­graph 3 of the Mad­rid Agree­ment⁴⁸, or Art­icle 2 para­graph 1 of the Mad­rid Pro­tocol⁴⁹;

b.

the modi­fic­a­tion of an in­ter­na­tion­al re­gis­tra­tion provided that Switzer­land is the coun­try of the pro­pri­et­or of the trade mark in ac­cord­ance with the Mad­rid Agree­ment or the Mad­rid Pro­tocol;

c.

the in­ter­na­tion­al re­gis­tra­tion of an ap­plic­a­tion provided that Switzer­land is the coun­try of ori­gin in ac­cord­ance with Art­icle 2 para­graph 1 of the Mad­rid Pro­tocol.

² The fees as set out in the Mad­rid Agree­ment, the Mad­rid Pro­tocol and in the Or­din­ance must be paid for the in­ter­na­tion­al re­gis­tra­tion of a trade mark, an ap­plic­a­tion for re­gis­tra­tion or the modi­fic­a­tion of an in­ter­na­tion­al re­gis­tra­tion.

¹ An in­ter­na­tion­al re­gis­tra­tion with ef­fect in Switzer­land has the same ef­fect as the fil­ing of an ap­plic­a­tion with the IPI and re­gis­tra­tion in the Swiss Re­gister.

² Such ef­fect does not arise if and to the ex­tent the in­ter­na­tion­ally re­gistered trade mark has been re­fused pro­tec­tion in Switzer­land.

¹ An in­ter­na­tion­al re­gis­tra­tion may be con­ver­ted in­to a na­tion­al ap­plic­a­tion for re­gis­tra­tion if:

a.

the ap­plic­a­tion is sub­mit­ted to the IPI with­in three months of can­cel­ling the in­ter­na­tion­al re­gis­tra­tion;

b.

the in­ter­na­tion­al re­gis­tra­tion and the na­tion­al ap­plic­a­tion for re­gis­tra­tion con­cern the same trade mark;

c.

the goods and ser­vices in­dic­ated in the ap­plic­a­tion were also the ac­tu­al goods and ser­vices covered by the in­ter­na­tion­al re­gis­tra­tion hav­ing ef­fect in Switzer­land;

d.

the na­tion­al ap­plic­a­tion for re­gis­tra­tion ful­fils the oth­er re­quire­ments laid down in this Act.

² Ob­jec­tions raised against the re­gis­tra­tion of trade marks filed in ac­cord­ance with para­graph 1 are in­ad­miss­ible.

¹ In­dic­a­tions of source are dir­ect or in­dir­ect ref­er­ences to the geo­graph­ic­al ori­gin of goods or ser­vices, in­clud­ing ref­er­ences to their char­ac­ter­ist­ics or the qual­ity as­so­ci­ated with their ori­gin.

² Geo­graph­ic­al names and signs that are not un­der­stood by the rel­ev­ant pub­lic as in­dic­at­ing a cer­tain ori­gin of the goods or ser­vices, are not con­sidered in­dic­a­tions of source with­in the mean­ing of para­graph 1.

³ It is pro­hib­ited to use:

a.

in­cor­rect in­dic­a­tions of source;

b.

de­nom­in­a­tions that may be con­fused with an in­cor­rect in­dic­a­tion of source;

c.⁵²

a name, a com­pany name, an ad­dress or a trade mark as­so­ci­ated with goods or ser­vices of a dif­fer­ent ori­gin where this could be mis­lead­ing.

^3bis Where in­dic­a­tions of source are used with ad­di­tions such as «kind», «type», «style» or «im­it­a­tion», the same re­quire­ments must be ful­filled that ap­ply to the use of in­dic­a­tions of source without these ad­di­tions.⁵³

^3ter In­dic­a­tions re­gard­ing re­search or design or oth­er spe­cif­ic activ­it­ies as­so­ci­ated with the product may only be used if this activ­ity takes place en­tirely at the spe­cified loc­a­tion.⁵⁴

⁴ Re­gion­al or loc­al in­dic­a­tions of source for ser­vices are con­sidered to be cor­rect if such ser­vices sat­is­fy the cri­ter­ia of ori­gin for the coun­try con­cerned as a whole.

¹ In­dic­a­tions of source for goods are con­sidered to be cor­rect if the re­quire­ments un­der Art­icles 48a-48c are ful­filled.

² Any ad­di­tion­al re­quire­ments such as com­pli­ance with man­u­fac­tur­ing or pro­cessing prin­ciples or qual­ity re­quire­ments that are cus­tom­ary or pre­scribed in the place of ori­gin must also be ful­filled.

³ In each in­di­vidu­al case, all re­quire­ments are to be de­term­ined ac­cord­ing to the un­der­stand­ing of the rel­ev­ant pub­lic, and where ap­plic­able, in ac­cord­ance with their in­flu­ence on the repu­ta­tion of the goods con­cerned.

⁴ The place of ori­gin or pro­cessing for Swiss in­dic­a­tions of source for nat­ur­al products and food­stuffs is the Swiss ter­rit­ory and cus­toms uni­on areas. The Fed­er­al Coun­cil may define the bor­der areas, which are ex­cep­tion­ally con­sidered as the place of ori­gin or pro­cessing for Swiss in­dic­a­tions of source.

⁵ Where a for­eign in­dic­a­tion of source meets the stat­utory re­quire­ments of the coun­try con­cerned, it is con­sidered to be cor­rect. Any pos­sible mis­lead­ing of con­sumers in Switzer­land re­mains re­served.

The ori­gin of a nat­ur­al product cor­res­ponds to:

a.

for min­er­al products: the place where they were ex­trac­ted;

b.

for plant products: the place where they were har­ves­ted;

c.

for meat: the place where the an­im­als spent the pre­dom­in­ant part of their lives;

d.

for oth­er an­im­al-de­rived products: the place where the an­im­als were kept;

e.

for products of hunt­ing or fish­ing: the place where such hunt­ing or fish­ing was car­ried out;

f.

for farmed fish: the place where they were reared.

¹ Food­stuffs with­in the mean­ing of the Food­stuffs Act of 9 Oc­to­ber 1992⁵⁸ (FSA) ​​fall un­der this pro­vi­sion, with the ex­cep­tion of nat­ur­al products un­der Art­icle 48a of this Act. The Fed­er­al Coun­cil shall reg­u­late the dif­fer­ences in de­tail.

² The ori­gin of a food­stuff is the place from which at least 80 per cent of the raw ma­ter­i­al weight that makes up the food­stuff comes from. For milk and dairy products, the weight of milk as the raw ma­ter­i­al must equal 100 per cent.

³ Ex­cluded from the cal­cu­la­tion un­der para­graph 2 are:

a.

nat­ur­al products which, due to nat­ur­al con­di­tions, can­not be pro­duced at the place of ori­gin;

b.

nat­ur­al products that are tem­por­ar­ily not avail­able in suf­fi­cient quant­it­ies at the place of ori­gin.

⁴ For the cal­cu­la­tion un­der para­graph 2, all raw ma­ter­i­als for which the do­mest­ic self-sup­ply rate is at least 50 per cent must be taken in­to ac­count. Where the raw ma­ter­i­al self-sup­ply rate is 20–49.9 per cent, only half of the raw ma­ter­i­als are to be taken in­to ac­count. Where the raw ma­ter­i­al self-sup­ply rate is less than 20 per cent, the raw ma­ter­i­als may be ex­cluded from the cal­cu­la­tion. The Fed­er­al Coun­cil shall reg­u­late the de­tails.

⁵ In ad­di­tion, the in­dic­a­tion of source must cor­res­pond to the place where the pro­cessing, which has giv­en the food­stuff its es­sen­tial char­ac­ter­ist­ics, has taken place.

¹ The ori­gin of oth­er products, in par­tic­u­lar in­dus­tri­al products, cor­res­ponds to the place where at least 60 per cent of the man­u­fac­tur­ing costs are in­curred.

² For the cal­cu­la­tion un­der para­graph 1, the fol­low­ing shall be taken in­to ac­count:

a.

pro­duc­tion and as­sembly costs;

b.

re­search and de­vel­op­ment costs;

c.

costs for qual­ity as­sur­ance and cer­ti­fic­a­tion which are pre­scribed by law or stand­ard­ised in an eco­nom­ic sec­tor.

³ Ex­cluded from the cal­cu­la­tion un­der para­graph 1 are:

a.

costs for nat­ur­al products which, due to nat­ur­al con­di­tions, can­not be pro­duced at the place of ori­gin;

b.

costs for raw ma­ter­i­als which, in ac­cord­ance with an or­din­ance un­der Art­icle 50 para­graph 2, are not avail­able in suf­fi­cient quant­it­ies at the place of ori­gin for ob­ject­ive reas­ons;

c.

pack­aging costs;

d.

trans­port costs;

e.

the costs for com­mer­cial­isa­tion of the goods, such as costs for mar­ket­ing and cus­tom­er ser­vice.

⁴ In ad­di­tion, the in­dic­a­tion of source must cor­res­pond to the place where the activ­ity, which gave the product its es­sen­tial char­ac­ter­ist­ics, took place. In all cases, an es­sen­tial man­u­fac­tur­ing step must have been car­ried out at this place.

The re­quire­ments set out in Art­icles 48a–48c do not ap­ply if:

a.

a geo­graph­ic­al in­dic­a­tion was re­gistered un­der Art­icle 16 Ag­ricA⁶¹ pri­or to the entry in­to force of this pro­vi­sion; or

b.

a man­u­fac­turer is able to prove that the in­dic­a­tions of source used cor­res­pond to the rel­ev­ant pub­lic.

¹ The in­dic­a­tion of source of a ser­vice is con­sidered to be cor­rect if:

a.

it cor­res­ponds to the re­gistered of­fice of the per­son provid­ing the ser­vice; and

b.

a place of ef­fect­ive ad­min­is­tra­tion of this per­son is loc­ated in the same coun­try.

² Where a par­ent com­pany ful­fils the re­quire­ments of para­graph 1 let­ter a, and either it or one of its sub­si­di­ar­ies ef­fect­ively con­trolled by it and dom­i­ciled in the same coun­try ful­fils the re­quire­ments of para­graph 1 let­ter b, then the in­dic­a­tion of source is also con­sidered to be cor­rect for sim­il­ar ser­vices provided by the for­eign sub­si­di­ar­ies and the branch of­fices of the par­ent com­pany.

³ Any ad­di­tion­al re­quire­ments such as com­pli­ance with pre­scribed or cus­tom­ary prin­ciples of provid­ing the ser­vice or the tra­di­tion­al as­so­ci­ation of the per­son provid­ing the ser­vice with the coun­try of ori­gin must also be ful­filled.

⁴ A for­eign in­dic­a­tion of source is con­sidered to be cor­rect where it meets the stat­utory re­quire­ments of the coun­try con­cerned. Any pos­sible mis­lead­ing of con­sumers in Switzer­land re­mains re­served.

In­dic­a­tions of source in ad­vert­ising are con­sidered to be cor­rect if the ori­gin of all of the products and ser­vices ad­vert­ised therein cor­res­ponds to Art­icles 48–49.

¹ Where jus­ti­fied by con­sumer in­terests, the gen­er­al in­terests of the eco­nomy or of in­di­vidu­al sec­tors, the Fed­er­al Coun­cil may define the re­quire­ments un­der Art­icles 48 para­graph 2 and 48a–49 in great­er de­tail.

² It may, in par­tic­u­lar, at the re­quest and based on a pre­lim­in­ary draft of an eco­nom­ic sec­tor, define in great­er de­tail the re­quire­ments un­der which a Swiss in­dic­a­tion of source may be used for spe­cif­ic goods and ser­vices.

³ It shall first hear the Can­tons con­cerned and in­ter­ested pro­fes­sion­al and trade as­so­ci­ations, as well as con­sumer or­gan­isa­tions.

Where the in­terests of an eco­nom­ic sec­tor so re­quire, the Fed­er­al Coun­cil may pre­scribe that a pro­du­cer iden­ti­fic­a­tion mark be af­fixed to goods of that eco­nom­ic sec­tor.

¹ The Fed­er­al Coun­cil shall es­tab­lish a re­gister for geo­graph­ic­al in­dic­a­tions for goods, which ex­cludes ag­ri­cul­tur­al products, pro­cessed ag­ri­cul­tur­al products and wine, as well as forestry products and pro­cessed forestry products.

² It reg­u­lates in par­tic­u­lar:

a.

en­ti­tle­ment to ap­ply for re­gis­tra­tion;

b.

re­quire­ments for re­gis­tra­tion, in par­tic­u­lar the re­quire­ments for the product spe­cific­a­tion;

c.

the pro­ced­ure for re­gis­tra­tion and ob­jec­tion;

d.

con­trol pro­ced­ures.

³ De­cisions and ser­vices in con­nec­tion with the re­gister are sub­ject to fees.

⁴ Re­gistered geo­graph­ic­al in­dic­a­tions may not be­come gen­er­ic names. Gen­er­ic names can­not be re­gistered as geo­graph­ic­al in­dic­a­tions.

⁵ Any per­son who uses a re­gistered geo­graph­ic­al in­dic­a­tion for identic­al or com­par­able goods must com­ply with the product spe­cific­a­tions. This ob­lig­a­tion does not ap­ply to the use of trade marks that are identic­al or sim­il­ar to a re­gistered geo­graph­ic­al in­dic­a­tion and which were filed or re­gistered in good faith, or that have been ac­quired through use in good faith:

a.

pri­or to 1 Janu­ary 1996; or

b.

pri­or to the name of the re­gistered geo­graph­ic­al in­dic­a­tion be­ing pro­tec­ted in the coun­try of ori­gin, in­so­far as none of the grounds for nullity or re­voc­a­tion set out in this Act ap­ply to the trade mark con­cerned.

⁶ Where a trade mark con­tain­ing a geo­graph­ic­al in­dic­a­tion, identic­al or sim­il­ar to a geo­graph­ic­al in­dic­a­tion for which re­gis­tra­tion has been ap­plied, is filed for identic­al or com­par­able goods, the trade mark ex­am­in­a­tion pro­ced­ure shall be sus­pen­ded un­til the fi­nal de­cision on the ap­plic­a­tion for re­gis­tra­tion of the geo­graph­ic­al in­dic­a­tion.

⁷ Fol­low­ing re­gis­tra­tion of the geo­graph­ic­al in­dic­a­tion, the trade mark may only be re­gistered for identic­al or com­par­able goods. The goods must be re­stric­ted to the geo­graph­ic­al ori­gin de­scribed in the product spe­cific­a­tions.

⁸ Re­gistered geo­graph­ic­al in­dic­a­tions are pro­tec­ted in par­tic­u­lar against:

a.

any com­mer­cial use for oth­er products, whereby the repu­ta­tion of the pro­tec­ted de­nom­in­a­tion is ex­ploited;

b.

any act of ap­pro­pri­ation, coun­ter­feit­ing or im­it­a­tion.

¹ The in­ter­na­tion­al re­gis­tra­tion of ap­pel­la­tions of ori­gin and geo­graph­ic­al in­dic­a­tions is gov­erned by the Geneva Act of 20 May 2015⁶⁹ of the Lis­bon Agree­ment for the Pro­tec­tion of Ap­pel­la­tions of Ori­gin and Geo­graph­ic­al In­dic­a­tions (Geneva Act) and by the pro­vi­sions of this Chapter.

² The IPI is re­spons­ible for ad­min­is­ter­ing the Geneva Act for Switzer­land in the fol­low­ing areas:

a.

the in­ter­na­tion­al re­gis­tra­tion of ap­pel­la­tions of ori­gin and geo­graph­ic­al in­dic­a­tions whose geo­graph­ic­al area of ori­gin lies on Swiss ter­rit­ory (Art. 50d);

b.

the ef­fects of the in­ter­na­tion­al re­gis­tra­tion of ap­pel­la­tions of ori­gin and geo­graph­ic­al in­dic­a­tions whose pro­tec­tion on Swiss ter­rit­ory has been re­ques­ted (Art. 50e).

¹ An ap­plic­a­tion for the in­ter­na­tion­al re­gis­tra­tion or the amend­ment of the in­ter­na­tion­al re­gis­tra­tion of an ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion whose geo­graph­ic­al area of ori­gin lies on Swiss ter­rit­ory may be filed with the IPI by:

a.

the group that has ob­tained the re­gis­tra­tion of the ap­pel­la­tion of ori­gin or the geo­graph­ic­al in­dic­a­tion un­der Art­icle 16 or 63 Ag­ricA⁷⁰ nor un­der Art­icle 50b of this Act, or where such group no longer ex­ists, the rep­res­ent­at­ive group deal­ing with the pro­tec­tion of this ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion;

b.

the Swiss can­ton that pro­tects an ap­pel­la­tion d’ori­gine con­trôlée un­der Art­icle 63 Ag­ricA;

c.

the um­brella or­gan­isa­tion of an eco­nom­ic sec­tor for which the Fed­er­al Coun­cil has en­acted an or­din­ance based on Art­icle 50 para­graph 2;

d.

the pro­pri­et­or of a trade mark that con­sti­tutes an ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion as defined in Art­icle 2 of the Geneva Act⁷¹, provided the ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion is neither pro­tec­ted un­der Art­icle 16 or 63 Ag­ricA nor un­der Art­icle 50 para­graph 2 or 50b of this Act.

² The Fed­er­al Coun­cil shall reg­u­late the de­tails of the pro­ced­ure.

¹ The ef­fects of the in­ter­na­tion­al re­gis­tra­tion of an ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion whose pro­tec­tion on Swiss ter­rit­ory has been re­ques­ted may be re­fused on the fol­low­ing grounds in par­tic­u­lar:

a.

The de­nom­in­a­tion or in­dic­a­tion does not cor­res­pond to the defin­i­tions in Art­icle 2 of the Geneva Act⁷².

b.

The pro­tec­tion based on in­ter­na­tion­al re­gis­tra­tion is con­trary to the law, pub­lic policy or mor­al­ity.

c.

The pro­tec­tion based on in­ter­na­tion­al re­gis­tra­tion in­fringes an earli­er trade mark that has been re­gistered in good faith for an identic­al or com­par­able product.

² The IPI de­cides ex of­fi­cio wheth­er a ground un­der para­graph 1 let­ter a or b ap­plies.

³ A third party may raise any of the grounds un­der para­graph 1 with the IPI.

⁴ In ad­di­tion, a third party may re­quest the trans­ition­al peri­od un­der Art­icle 17 of the Geneva Act to be gran­ted, in or­der to ter­min­ate the pri­or use in good faith of a de­nom­in­a­tion or in­dic­a­tion that is the sub­ject of in­ter­na­tion­al re­gis­tra­tion.

⁵ A trade mark that has been filed or re­gistered in good faith be­fore the de­nom­in­a­tion or in­dic­a­tion that is the sub­ject of in­ter­na­tion­al re­gis­tra­tion has been pro­tec­ted on Swiss ter­rit­ory and whose use for an identic­al or com­par­able product would be con­trary to Art­icle 11 of the Geneva Act, can nev­er­the­less con­tin­ue to be used provided there are no grounds for nullity or for­feit­ure un­der this Act. Its re­gis­tra­tion may be ex­ten­ded un­der the same con­di­tions.

⁶ Art­icle 50b para­graphs 6 and 7 ap­ply by ana­logy.

⁷ The Fed­er­al Coun­cil shall reg­u­late the de­tails of the pro­ced­ure.

The IPI may by or­din­ance provide that the ap­plic­ant is charged fees for:

a.

the pro­cessing of an ap­plic­a­tion for the in­ter­na­tion­al re­gis­tra­tion of ap­pel­la­tions of ori­gin and geo­graph­ic­al in­dic­a­tions whose geo­graph­ic­al area of ori­gin lies on Swiss ter­rit­ory, or an ap­plic­a­tion for the amend­ment of the said re­gis­tra­tion (Art. 50d para. 1);

b.

the sub­stant­ive ex­am­in­a­tion of the in­ter­na­tion­al re­gis­tra­tion of an ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion whose pro­tec­tion on Swiss ter­rit­ory is re­ques­ted (Art. 50e para. 2);

c.

the pro­cessing of a re­quest to deny the ef­fects of the in­ter­na­tion­al re­gis­tra­tion of an ap­pel­la­tion of ori­gin or geo­graph­ic­al in­dic­a­tion on Swiss ter­rit­ory (Art. 50e para. 3);

d.

the pro­cessing of a re­quest to grant a trans­ition­al peri­od (Art. 50e para. 4).

Re­pealed

The user of an in­dic­a­tion of source must prove that it is cor­rect.

Any per­son who can demon­strate a leg­al in­terest may ap­ply to the court for a de­clar­at­ory judge­ment as to wheth­er a right or leg­al re­la­tion­ship gov­erned by this Act does or does not ex­ist.

¹ The plaintiff may bring an ac­tion for the as­sign­ment of the trade mark in­stead of a de­clar­a­tion of nullity of the trade mark re­gis­tra­tion if the de­fend­ant has usurped the trade mark.

² This right shall lapse two years after pub­lic­a­tion of the re­gis­tra­tion or after with­draw­al of the pro­pri­et­or’s con­sent un­der Art­icle 4.

³ If the court or­ders the as­sign­ment, then li­cences or oth­er rights gran­ted to third parties in the in­ter­ven­ing peri­od lapse; however, if they have used the trade mark com­mer­cially in Switzer­land in good faith or have made spe­cial pre­par­a­tions for this pur­pose, these third parties are en­titled to be gran­ted a non-ex­clus­ive li­cence.⁷⁴

⁴ Any claims for dam­ages re­main re­served.⁷⁵

The au­thor­ity passing judg­ment shall provide the IPI with full of­fi­cial cop­ies of its de­cisions, in­clud­ing those re­gard­ing pre­lim­in­ary meas­ures and de­cisions on dis­missal after they have been is­sued, without delay and free of charge.

¹ Any per­son whose right to a trade mark or an in­dic­a­tion of source is in­fringed or threatened may re­quest the court:

a.

to pro­hib­it an im­min­ent in­fringe­ment;

b.

to rem­edy an ex­ist­ing in­fringe­ment;

c.⁷⁷

to re­quire the de­fend­ant to provide in­form­a­tion on the ori­gin and quant­ity of items in his pos­ses­sion that un­law­fully bear the trade mark or the in­dic­a­tion of source and to name the re­cip­i­ents and dis­close the ex­tent of any dis­tri­bu­tion to com­mer­cial and in­dus­tri­al cus­tom­ers.

² Ac­tions brought un­der the Code of Ob­lig­a­tions⁷⁸ for dam­ages, sat­is­fac­tion and hand­ing over of profits in ac­cord­ance with the pro­vi­sions con­cern­ing agency without au­thor­ity re­main re­served.

^2bis An ac­tion for per­form­ance may be in­sti­tuted only after the entry of the trade mark in the Re­gister. Claims for dam­ages may be made ret­ro­act­ively from the time at which the de­fend­ant ob­tained know­ledge of the con­tent of the ap­plic­a­tion for re­gis­tra­tion.⁷⁹

³ The use of a guar­an­tee or col­lect­ive mark con­trary to the ap­plic­able reg­u­la­tions also con­sti­tutes an in­fringe­ment of a trade mark right.

⁴ Any per­son who holds an ex­clus­ive li­cence is en­titled to bring a sep­ar­ate ac­tion ir­re­spect­ive of the re­gis­tra­tion of the li­cence in the Re­gister un­less this is ex­pressly ex­cluded in the li­cence agree­ment. Any li­censees may join an in­fringe­ment ac­tion in or­der to claim for their own dam­ages.⁸⁰

¹ The fol­low­ing are also au­thor­ised to bring ac­tions for a de­clar­at­ory judg­ment (Art. 52) and ac­tions for per­form­ance (Art. 55 para. 1) con­cern­ing the pro­tec­tion of in­dic­a­tions of source:

a.

pro­fes­sion­al and trade as­so­ci­ations au­thor­ised by their stat­utes to safe­guard the eco­nom­ic in­terests of their mem­bers;

b.

or­gan­isa­tions of na­tion­al or re­gion­al im­port­ance ded­ic­ated by their stat­utes to the pro­tec­tion of con­sumers;

c.

the IPI, to the ex­tent that des­ig­na­tions such as «Switzer­land», «Swiss» or oth­er des­ig­na­tions or sym­bols that in­dic­ate the geo­graph­ic­al ter­rit­ory of the Swiss Con­fed­er­a­tion with­in the mean­ing of Art­icle 48 para­graph 4 are used;

d.

the can­ton con­cerned, to the ex­tent that its name or oth­er des­ig­na­tions or sym­bols re­fer­ring to its geo­graph­ic­al ter­rit­ory are used.

² As­so­ci­ations and or­gan­isa­tions un­der para­graph 1 let­ters a and b are en­titled to bring ac­tions un­der Art­icle 52 with re­spect to a guar­an­tee mark (Art. 21 para. 1) or col­lect­ive mark (Art. 22).

³ The can­tons shall des­ig­nate the com­pet­ent au­thor­ity for ac­tions un­der para­graph 1 let­ter d.

¹ The court may or­der the for­feit­ure of items which un­law­fully bear a trade mark or an in­dic­a­tion of source or of equip­ment, devices and oth­er means that primar­ily serve their man­u­fac­ture.⁸²

² The court de­cides wheth­er the trade mark or in­dic­a­tion of source is to be made un­re­cog­nis­able or wheth­er the items are to be rendered un­us­able, to be des­troyed or to be used in a spe­cif­ic way.

¹ Any per­son re­quest­ing pre­lim­in­ary meas­ures may, in par­tic­u­lar, re­quest that the court or­ders meas­ures to:

a.

se­cure evid­ence;

b.

es­tab­lish the ori­gin of items un­law­fully bear­ing a trade mark or in­dic­a­tion of source;

c.

pre­serve the ex­ist­ing state of af­fairs;

d.

pro­vi­sion­ally en­force claims for in­junct­ive re­lief and rem­edy.

The court may or­der, at the re­quest of the suc­cess­ful party, that the judg­ment be pub­lished at the ex­pense of the oth­er party. The court de­term­ines the form and ex­tent of pub­lic­a­tion.

¹ On com­plaint of the in­jured party, any per­son who wil­fully in­fringes the trade mark right of an­oth­er is li­able to a cus­todi­al sen­tence not ex­ceed­ing one year or a mon­et­ary pen­alty if he:

a.

ap­pro­pri­ates, coun­ter­feits or im­it­ates the trade mark of the oth­er per­son;

b.⁸⁶

places goods on the mar­ket or provides ser­vices, or of­fers, im­ports, ex­ports, car­ries in trans­it, stores for the pur­pose of pla­cing on the mar­ket or ad­vert­ises such goods or ser­vices un­der the ap­pro­pri­ated, coun­ter­feited or im­it­ated trade mark.

² On com­plaint of the in­jured party, any per­son who re­fuses to provide in­form­a­tion on the ori­gin or quant­ity of the items in his pos­ses­sion that un­law­fully bear the trade mark and to name the re­cip­i­ents and dis­close the ex­tent of dis­tri­bu­tion to com­mer­cial and in­dus­tri­al cus­tom­ers is also li­able to the same pen­al­ties.

³ If the of­fend­er acts for com­mer­cial gain, he shall be pro­sec­uted ex of­fi­cio. The pen­alty is a cus­todi­al sen­tence not ex­ceed­ing five years or a mon­et­ary pen­alty. The cus­todi­al sen­tence shall be com­bined with a mon­et­ary pen­alty.

¹ On com­plaint of the in­jured party, any per­son who com­mits any of the fol­low­ing acts is li­able to a cus­todi­al sen­tence not ex­ceed­ing one year or a mon­et­ary pen­alty:⁸⁷

a.

un­law­fully la­bels goods or ser­vices with the trade mark of an­oth­er per­son in or­der to mis­lead and thereby give the im­pres­sion that the goods or ser­vices are ori­gin­al goods or ser­vices;

b.

of­fers or places goods or ser­vices on the mar­ket as ori­gin­al goods or ser­vices, or of­fers or provides ori­gin­al ser­vices that un­law­fully bear the trade mark of an­oth­er;

² If the of­fend­er acts for com­mer­cial gain, he shall be pro­sec­uted ex of­fi­cio. The pen­alty is a cus­todi­al sen­tence not ex­ceed­ing five years or a mon­et­ary pen­alty. The cus­todi­al sen­tence shall be com­bined with a mon­et­ary pen­alty.⁸⁸

³ ...⁸⁹

¹ On com­plaint of the in­jured party, any per­son who wil­fully uses a guar­an­tee or col­lect­ive mark in a man­ner con­trary to the reg­u­la­tions is li­able to a cus­todi­al sen­tence not ex­ceed­ing one year or a mon­et­ary pen­alty.⁹⁰

² On com­plaint of the in­jured party, any per­son who re­fuses to provide in­form­a­tion on the ori­gin of items in his pos­ses­sion that bear a guar­an­tee or col­lect­ive mark con­trary to the reg­u­la­tions, is also li­able to the same pen­al­ties.

³ Where only minor reg­u­la­tion pro­vi­sions are con­cerned, a pen­alty may be dis­pensed with.

⁴ If the of­fend­er acts for com­mer­cial gain, he shall be pro­sec­uted ex of­fi­cio. The pen­alty is a cus­todi­al sen­tence not ex­ceed­ing five years or a mon­et­ary pen­alty. The cus­todi­al sen­tence shall be com­bined with a mon­et­ary pen­alty.⁹¹

¹ Any per­son who wil­fully com­mits any of the fol­low­ing acts is li­able to a cus­todi­al sen­tence not ex­ceed­ing one year or a mon­et­ary pen­alty:

a.

uses an in­cor­rect in­dic­a­tion of source;

b.

uses a de­nom­in­a­tion that can be con­fused with an in­cor­rect in­dic­a­tion of source;

c.

cre­ates a risk of de­cep­tion by us­ing a name, a com­pany name, an ad­dress or a trade mark as­so­ci­ated with goods or ser­vices of a dif­fer­ent ori­gin.

² If the of­fend­er acts for com­mer­cial gain, the pen­alty is a cus­todi­al sen­tence not ex­ceed­ing five years or a mon­et­ary pen­alty. The cus­todi­al sen­tence shall be com­bined with a mon­et­ary pen­alty.

³ The IPI may file a com­plaint with the com­pet­ent pro­sec­u­tion au­thor­ity and ex­er­cise the rights of a private claimant in pro­ceed­ings.

Any per­son who wil­fully in­fringes the reg­u­la­tions con­cern­ing the pro­du­cer iden­ti­fic­a­tion mark shall be li­able to a fine of up to 20,000 francs.

Acts un­der Art­icle 13 para­graph 2^bis are not pun­ish­able.

¹ The court may sus­pend crim­in­al pro­ceed­ings if the per­son un­der in­vest­ig­a­tion in­sti­tutes civil pro­ceed­ings for the nullity of the trade mark re­gis­tra­tion.

² If the per­son un­der in­vest­ig­a­tion pleads the nullity of the trade mark re­gis­tra­tion in crim­in­al pro­ceed­ings, the court may set an ap­pro­pri­ate time lim­it for him to as­sert such nullity in civil pro­ceed­ings.

³ The lim­it­a­tion peri­od for pro­sec­u­tion is sus­pen­ded dur­ing the stay of pro­ceed­ings.

Art­icles 6 and 7 of the Fed­er­al Act of 22 March 1974⁹⁴ on Ad­min­is­trat­ive Crim­in­al Law ap­ply to of­fences com­mit­ted with­in a busi­ness by sub­or­din­ates, agents or rep­res­ent­at­ives.

Art­icle 69 of the Swiss Crim­in­al Code⁹⁶ ap­plies; the court can or­der the for­feit­ure of an item which un­law­fully bears a trade mark or an in­dic­a­tion of source in its en­tirety.

Crim­in­al pro­sec­u­tion is a mat­ter for the can­ton­al au­thor­it­ies.

¹ The Fed­er­al Of­fice for Cus­toms and Bor­der Se­cur­ity (FO­CBS) is au­thor­ised to no­ti­fy the pro­pri­et­or of the trade mark, the per­son en­titled to use an in­dic­a­tion of source or a party en­titled to in­sti­tute pro­ceed­ings un­der Art­icle 56 if there is any sus­pi­cion of the im­min­ent trans­port of goods that un­law­fully bear a trade mark or an in­dic­a­tion of source in­to or out of the cus­toms ter­rit­ory of Switzer­land.⁹⁹

² In such cases, the FO­CBS¹⁰⁰ is au­thor­ised to with­hold the goods for three work­ing days, in or­der that the pro­pri­et­or of the trade mark, the per­son en­titled to use the in­dic­a­tion of source or a pro­fes­sion­al or trade as­so­ci­ation en­titled to in­sti­tute pro­ceed­ings un­der Art­icle 56 may file an ap­plic­a­tion un­der Art­icle 71.

¹ If the pro­pri­et­or of the trade mark, the li­censee en­titled to in­sti­tute pro­ceed­ings, the per­son en­titled to use an in­dic­a­tion of source or a party en­titled to in­sti­tute pro­ceed­ings un­der Art­icle 56 has clear in­dic­a­tions of the im­min­ent trans­port of goods that un­law­fully bear a trade mark or an in­dic­a­tion of source in­to or out of the cus­toms ter­rit­ory of Switzer­land, he or she may re­quest the FO­CBS in writ­ing to re­fuse the re­lease of the goods.¹⁰¹

² The ap­plic­ant must provide all the in­form­a­tion avail­able to him that is ne­ces­sary for the FO­CBS’s de­cision; this in­cludes a pre­cise de­scrip­tion of the goods.

³ The FO­CBS shall make the fi­nal de­cision on the ap­plic­a­tion. It may charge a fee to cov­er the ad­min­is­trat­ive costs.

¹ If the FO­CBS, as a res­ult of an ap­plic­a­tion un­der Art­icle 71 para­graph 1, has reas­on­able grounds to sus­pect that cer­tain goods in­ten­ded to be trans­por­ted in­to or out of the cus­toms ter­rit­ory of Switzer­land un­law­fully bear a trade mark or in­dic­a­tion of source, then it shall no­ti­fy the ap­plic­ant and the de­clar­ant, hold­er or own­er of the goods ac­cord­ingly.¹⁰³

² It shall with­hold the goods for a max­im­um of ten work­ing days from the time of no­ti­fic­a­tion pur­su­ant to para­graph 1, so that the ap­plic­ant may ob­tain pre­lim­in­ary meas­ures.

³ Where jus­ti­fied by cir­cum­stances, it may with­hold the goods for a max­im­um of ten ad­di­tion­al work­ing days.

¹ While the goods are be­ing with­held, the FO­CBS is au­thor­ised to hand over or de­liv­er to the ap­plic­ant, on re­quest, spe­ci­mens or samples for ex­am­in­a­tion or to per­mit the ap­plic­ant to in­spect the goods be­ing with­held.

² The spe­ci­mens or samples are col­lec­ted and de­livered at the ex­pense of the ap­plic­ant.

³ They must be re­turned after the ex­am­in­a­tion has been car­ried out, if this is reas­on­able. If spe­ci­mens or samples are re­tained by the ap­plic­ant, they are sub­ject to the pro­vi­sions of cus­toms le­gis­la­tion.

¹ At the same time as no­ti­fic­a­tion is made in ac­cord­ance with Art­icle 72 para­graph 1, the FO­CBS shall in­form the de­clar­ant, hold­er or own­er of the goods of the pos­sible han­dover of spe­ci­mens or samples or the op­por­tun­ity to in­spect them in ac­cord­ance with Art­icle 72a para­graph 1.

² The de­clar­ant, hold­er or own­er may re­quest to be present at the in­spec­tion in or­der to safe­guard his man­u­fac­tur­ing or trade secrets.

³ The FO­CBS may re­fuse to hand over spe­ci­mens or samples on reasoned re­quest from the de­clar­ant, hold­er or own­er.

¹ When mak­ing an ap­plic­a­tion un­der Art­icle 71 para­graph 1, the ap­plic­ant may sub­mit a writ­ten re­quest to the FO­CBS to des­troy the goods.

² If an ap­plic­a­tion for de­struc­tion is made, the FO­CBS shall no­ti­fy the de­clar­ant, hold­er or own­er of the goods ac­cord­ingly as part of the no­ti­fic­a­tion made un­der Art­icle 72 para­graph 1.

³ The ap­plic­a­tion for de­struc­tion does not res­ult in the time lim­its for ob­tain­ing pre­lim­in­ary meas­ures un­der Art­icle 72 para­graphs 2 and 3 be­ing ex­ten­ded.

¹ The de­struc­tion of the goods re­quires the con­sent of the de­clar­ant, hold­er or own­er.

² Con­sent is deemed to be giv­en if the de­clar­ant, hold­er or own­er does not ex­pressly ob­ject to the de­struc­tion with­in the time lim­its un­der Art­icle 72 para­graphs 2 and 3.

Be­fore the de­struc­tion of the goods, the FO­CBS shall re­move spe­ci­mens or samples and hold them in safe­keep­ing as evid­ence in any ac­tions for dam­ages.

¹ If the de­struc­tion of the goods proves to be un­jus­ti­fied, the ap­plic­ant is ex­clus­ively li­able for the res­ult­ant loss.

² If the de­clar­ant, hold­er or own­er has giv­en ex­press writ­ten con­sent for the de­struc­tion, no claims for dam­ages may be made against the ap­plic­ant if the de­struc­tion later proves to be un­jus­ti­fied.

¹ The de­struc­tion of the goods is car­ried out at the ex­pense of the ap­plic­ant.

² The de­cision about the costs of col­lect­ing and safe­keep­ing spe­ci­mens or samples un­der Art­icle 72e is made by the court in con­nec­tion with the as­sess­ment of claims for dam­ages in ac­cord­ance with Art­icle 72f para­graph 1.

¹ If it is an­ti­cip­ated that with­hold­ing the goods may lead to a loss be­ing in­curred, the FO­CBS may make the with­hold­ing of the goods de­pend­ent on the ap­plic­ant provid­ing them with an ac­count­ab­il­ity state­ment. As an al­tern­at­ive to this state­ment and where jus­ti­fied by cir­cum­stances, the FO­CBS may re­quest the ap­plic­ant to provide ap­pro­pri­ate se­cur­ity.

² The ap­plic­ant is li­able for any losses in­curred from with­hold­ing the goods and from col­lect­ing the spe­ci­mens or samples if pre­lim­in­ary meas­ures are not ordered or prove to be un­jus­ti­fied.

The Fed­er­al Coun­cil shall en­act the im­ple­ment­a­tion pro­vi­sions.

The Fed­er­al Act of 26 Septem­ber 1890¹¹² on the Pro­tec­tion of Fact­ory and Trade Marks, In­dic­a­tions of Source of Goods and In­dus­tri­al La­belling is re­pealed. However, Art­icle 16^bis para­graph 2 re­mains ap­plic­able un­til the entry in­to force of Art­icle 36 of this Act.

1. and 2. ...¹¹³

3. The ex­pres­sions «fact­ory and trade marks» shall be re­placed by «trade marks» in all en­act­ments; the ex­cep­tion shall be Art­icles 1 and 2 of the Fed­er­al Act of 5 June 1931¹¹⁴ on the Pro­tec­tion of Pub­lic Coats of Arms and oth­er Pub­lic Signs. The en­act­ments af­fected shall be amended at the next pos­sible op­por­tun­ity.

¹ Trade marks that have already been filed or re­gistered upon entry in­to force of this Act are sub­ject to the new law from that date.

² By way of derog­a­tion from para­graph 1, the fol­low­ing pro­vi­sions ap­ply:

a.

pri­or­ity is gov­erned by the pre­vi­ous law.

b.

grounds for re­fus­ing ap­plic­a­tions for re­gis­tra­tion, with the ex­cep­tion of ab­so­lute grounds for re­fus­al, are gov­erned by the pre­vi­ous law.

c.

op­pos­i­tions to the re­gis­tra­tion of trade marks already filed on entry in­to force of this Act are not ad­miss­ible;

d.

the valid­ity of a re­gis­tra­tion ter­min­ates on ex­piry of the time lim­it ap­plic­able un­der the pre­vi­ous law; up to such time, it may be re­newed at any time.

e.

the first re­new­al of the re­gis­tra­tion of a col­lect­ive mark is sub­ject to the same form­al re­quire­ments as those for fil­ing.

If, on entry in­to force of this Act, ap­plic­a­tions are pending for the re­gis­tra­tion of trade marks ex­cluded from re­gis­tra­tion un­der the pre­vi­ous law, but not un­der the new law, the date of entry in­to force shall be con­sidered the fil­ing date.

Any per­son who first used a trade mark pri­or to the entry in­to force of this Act on goods or their pack­aging or to identi­fy ser­vices, has pri­or­ity over the first ap­plic­ant on con­di­tion that he files the mark with­in two years of entry in­to force of this Act and at the same time states the date on which use of the trade mark com­menced.

² ...¹¹⁵

Art­icle 55 para­graph 4 and Art­icle 59 para­graph 5 only ap­ply to li­cence agree­ments that have been con­cluded or con­firmed after the Amend­ment to this Act dated 22 June 2007 enters in­to force.

¹ This Act is sub­ject to an op­tion­al ref­er­en­dum.

² The Fed­er­al Coun­cil shall de­term­ine the com­mence­ment date.

Com­mence­ment date: all pro­vi­sions with the ex­cep­tion of Art. 36: 1 April 1993¹¹⁷

Art. 36: 1 Janu­ary 1994¹¹⁸