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All you need to know about trade mark protection

Whether you are a globally active enterprise or a locally based business – a trade mark can become a precious asset. But what role does trade mark protection have to play? If you know your options, you have a better hand of cards.

The more successful the trade mark, the greater the threat from free riders. Photo: iStock
The more successful the trade mark, the greater the threat from free riders. Photo: iStock

Trade marks are differentiators. Consumers (unconsciously) make associations with them, which makes it easier for them to decide whether to purchase that brand’s product or service or not. Legally speaking, a trade mark is a sign that distinguishes specific products and/or services from those of other companies. Trade marks are therefore essential for economic success.

  

Protecting a trade mark helps to safeguard its success

But does every company need to have a trade mark protected by law? This depends, for example, on how important the trade mark is for the product, how long the product’s life cycle is and whether the company plans on expanding the geographical scope of their market. However, the more successful the trade mark, the greater the risk that free riders will want to profit from it. Protecting a trade mark helps to safeguard its success.

  

Only one registration protects a trade mark

Trade mark protection is not automatically obtained – for example, not even via a registration in the commercial register. The easiest way to protect a trade mark is to register it. In Switzerland, this involves submitting an application to the Swiss Federal Institute of Intellectual Property (IPI).

 

Entry in the trade mark register grants the owner the exclusive right to use their trade mark for labelling goods and services. The owner can even pass on this right, for example by licensing or selling it. Provided that there is a risk of confusion, the trade mark owner can prevent others from using a similar or identical sign to identify the same or similar goods or services.

  

Term of protection

Once registered, a trade mark is automatically protected for ten years. After that, for a fee, protection can be renewed every ten years or as often as required.

  

Protection is limited to one country

The principle of territoriality applies for trade marks. Protection is limited to the country in which the owner has registered their sign. However, trade mark protection can be extended to other countries in several ways. The need for geographical extension depends on the extent to which a company actually needs trade mark protection. Does a locally based business require a monopoly right for the whole country, or even a protected trade mark at all? This largely depends on what needs to be protected. For example, the answer will be different if a company has a special product which is widely recognised, as opposed to if only the trade name is to be protected.

  

Research before you apply

As well as the application, preparatory work also plays an important role. Before registering or using a trade mark, whoever wishes to avoid the risk of infringing the rights of third parties should find out if similar or identical trade marks already exist. This is where a trade mark search comes in handy. Many people do not know that the IPI does not draw the applicant’s attention to existing trade marks as part of the registration procedure.

  

The costs

In Switzerland, the costs depend on the scope and extent of goods and/or services to be protected. The basic fee is 550 Swiss francs. For an overview of the costs in Switzerland, click here. A renewal (for ten years) costs 700 Swiss francs. Additional costs strongly depend on personal choices – carrying out a trade mark search before registration, obtaining support from an attorney/trade mark consultant, extending protection to other countries (additional fees apply in each country).

  

Obligation to use the trade mark

The work does not end once the trade mark has been entered in the register. The trade mark must now be used. Swiss trade mark law recognises the obligation to use a trade mark. Following a grace period of five years and three months after the publication of the registration, every trade mark holder must be able to prove the use of the trade mark for all registered goods and services, for the event that a third party requests this. Whoever cannot do so risks losing their monopoly right. Due to the fact that, in registration procedures, earlier trade marks cannot be used as grounds for refusal of a registration, the trade mark owner has another task to complete. To keep a monopoly right, it is necessary for the trade mark owner to take action against competitors with similar signs.

 

These considerations demonstrate that brand management does not begin with the creation of the brand name or logo, nor does it end with a registration. Many other aspects are to be considered if you are making a conscious decision to protect your trade mark.

  
  

Info on trade mark protection

  • A trade mark can be a name, a logo, an image and much more.
  • A company’s trade mark is not automatically protected (for example via a registration in the commercial register). The easiest way to protect a trade mark is with a registration in the trade mark register.
  • In Switzerland, trade marks are registered with the Swiss Federal Institute of Intellectual Property (IPI).
  • A trade mark registration can infringe the rights of others. It is therefore recommended to carry out a trade mark search.
  • Following publication of the registration, the trade mark must be used within five years and three months if no opposition has been filed (otherwise it is five years after the expiry of opposition proceedings).
  • Trade mark protection is valid for ten years after the first registration. It can then be renewed as often as required.

 

You can find more information on this topic under trade mark protection.

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