An indication of source is a direct or indirect reference to the geographical origin of products or services used to identify it.
Geographical names or signs are direct or indirect references to a geographical place regardless of whether they are considered as a reference to the geographical origin by the relevant public. Geographical names or signs that are not understood by the relevant public as being a reference to a certain origin for goods or services are therefore not indications of source in the legal sense.
What determines whether a geographical name or sign is an indication of source or not is the existence of an expectation by the relevant public regarding the geographical origin of the goods or services.
An example of an indication of source is "Swiss" for machines.
Examples of geographical names or signs that are not indications of source are "Etna" for Bunsen burners and "North Pole" for refrigerators.
Generic names are geographical indications of source that have lost their original meaning and are no longer considered by the relevant public as being a reference to the origin of a product but rather as a general indication. As long as a section of the relevant public – even only a minority – considers the geographical name or sign to be a reference to the origin of a product, it remains an indication of source and therefore cannot be considered as a generic name.
Generic indications are considered as belonging to the public domain. Examples of generic names include: Eau de Cologne, hamburgers, wieners, French rolls.
Yes, there are.
A distinction is made between direct and indirect indications of source as well as between simple and qualified indications of source. All of these types of indications of source are equally protected under law in Switzerland.
Direct indications of source precisely indicate the name of the place of origin for the goods or services, for example, the name of a continent, a country, a state, a region, a canton, a city or a valley.
For example: "Bern" for biscuits.
Indirect indications of source are words or signs that create a relationship to a geographical place without explicitly naming the place of origin. This includes names or depictions such as:
- A famous building such as the Castle of Chillon, Big Ben, the Statue of Liberty or the Kremlin
- A famous real or fictive person, such as William Tell or Uncle Sam
- A mountain such as the Matterhorn
Simple indications of source refer to the geographical origin of goods or services that do not create any expectations regarding particular characteristics of the goods or services in question.
Examples include Swiss pasta or German clothing.
Qualified indications of source contain an indication of the geographical origin of goods or services which create an additional expectation regarding the characteristics of the product or service (expectations of quality) because the geographical indication has a particular reputation for the product or service in question.
For example, "Geneva" for watches and "Switzerland" for chocolate.
Controlled or protected indications of source (AOC, AOP or AO) and protected geographical indications (PGI) are special qualified indications of source for agricultural products (except for wines). They are regulated in Articles 14 and 16 of the Federal Act on Agriculture.
Geographical names of an area or a place which serve to indicate an agricultural product or a processed agricultural product and the geographical circumstances to which it mostly or exclusively owes its unique quality or characteristics can be registered as PDOs (such as Vacherin Mont-d’Or and Gruyère) or PGIs (such as Saucisson Vaudois). PDOs and PGIs are reserved exclusively for use by producers who are from the corresponding geographical region and who meet the corresponding requirements. For more information on PDOs and PGIs, visit the website of the Federal Office of Agriculture, which is the department responsible for these indications, or the website of the Swiss PDO-PGI Association.
AOs and indications of source for wines are defined by cantonal regulations within the framework of federal legislation. The corresponding information is available on the website of the Federal Office for Agriculture (in German, French or Italian).
As of 1 January 2017, it is also possible to register PAOs and PGIs for non-agricultural products with the IPI. More detailed information is available on this page.
Protection for an indication of source arises automatically. This means that it is not necessary to register it or obtain authorisation to use it from an authority. (Art. 47 et seq. of the Federal Act on the Protection of Trade Marks and Indications of Source). This is true for Swiss and foreign indications of source alike. It is valid for all product categories whether raw or manufactured, natural or industrial, as well as for services.
In principal, anyone can use an indication of source. However, it is prohibited to use incorrect indications of source or designations that could be confused with an incorrect indication of source (see What is an incorrect indication of source?).
Additional or special conditions could also apply, particularly for PAOs or PGIs or, for example, the name "Switzerland" for watches.
Indications of source are considered incorrect when the actual origin of the product or service is not as expected by the relevant public.
For example, the name "Switzerland", designations such as "Swiss", "Swiss Quality", "Made in Switzerland", "Swiss Made" and other designations containing Swiss or Switzerland as well as their translation into other languages can only be used exclusively for products manufactured in Switzerland and for services supplied out of Switzerland.
No, because delocalising adjectives such as ‘type’, ‘kind’, ‘according to a recipe’, ‘genre’, ‘method’, ‘style’ or ‘manner’ that are often used with geographical designations do not exclude the risk of being misleading regarding the origin of the product in question. Such add-ons are generally not suitable for counteracting the public's expectations regarding the geographical origin of goods so designated. For this reason, they are considered incorrect and misleading.
Whoever wilfully and unlawfully uses public signs (such as the Swiss cross) will be punished with a custodial sentence of up to one year or with a monetary penalty. If the offender acts commercially, the act is punishable with a custodial sentence of up to five years or with a monetary penalty. The maximum penalty is 360 daily penalty units, which can correspond to a maximum sum of CHF 1,080,000.
Under the law, misuse of the designation “Switzerland” is punishable with a custodial sentence of up to one year or with a monetary penalty. If the offender acts commercially, the penalty is up to five years custodial sentence or a monetary fine.
The instruments for combating misuse were improved in the revised Act. As of 1 January 2017, the IPI can file criminal charges in the name of the Swiss Confederation and bring an action before a civil court. Civil action may also be taken by industry sector and consumer protection associations.
Since direct indications of source belong to the public domain, they may not be used as the only element of a trade mark but rather must be combined with other trade mark elements that can be protected (for example, a graphical image) in such a way that the trade mark as a whole has a distinctive character.
A trade mark containing an indication of source as one of its elements must not be misleading in order to be able to be registered (see Can a trade mark containing an indication of source be used for products and services of any origin?).
You can find more information on this subject in the IPI’s Trade Mark Guidelines (in German, French and Italian, Part 4, Section 8.7.
A qualified indication of source that is recognised as such, notably by registering it as a PAO or PGI, can also be registered as a geographical mark.
Yes, you can.
You are allowed to use an indication of source that belongs to the public domain, provided that it is not misleading (see Can anyone use an indication of source?).The fact that an indication of source is part of a registered trade mark does not prevent other people from using the indication or source. Use of the registered trade mark, however, remains exclusively the right of its owner.
Wine appellations are protected under the Ordinance of 14 November 2007 on Viticulture and the Importation of Wine (SR 916.140, available in German, French and Italian). This ordinance defines the terms controlled appellations of origin (AOCs), local wines ("vins de pays") and table wines. The Federal Office of Agriculture (FOAG) maintains a register, available in German, French and Italian, at federal level of Swiss AOCs, which is based on cantonal legislation.
As the production areas are clearly delimited, wine producers within a given geographical zone have the right to use the controlled appellation of origin in question, provided the quality criteria is met.
- The use of the traditional name "Goron" for wine from the Canton of Vaud is illegal. The name "Goron" is a geographical indication that can be used only in the canton of Valais (see the Federal Court decision published in BGE 124 II 398).
The new 'Swissness' legislation provides for the creation of a geographical indications register for non- agricultural products (e.g. "Geneva" for watches). Today, the possibility of registering a mark exists only for agricultural products and processed agricultural products (for which the respective designations of origin and geographical indications may be registered via the Federal Office for Agriculture), and for wines (for which the registration is within the competence of the cantons). An identical possibility has also been provided for forestry products and processed forestry products. This new instrument allows for official recognition of the protection granted to geographical indications for all products, which is required by many foreign countries to grant protection within their own territory for geographical indications concerned.
The new regulations also provide for the possibility of registering designations of origin and geographical indications in a federal register as a geographical mark, as well as wine appellations for which protection is to be provided by the cantons, and indications that are the subject of a Federal Council ordinance.
These new instruments should allow for IP rights holders to be clearly identified and to facilitate enforcing their protection abroad.
A natural product (such as vegetables, mineral water, meat or gravel) is of Swiss origin if it has a strong connection to Swiss soil, such as the place of extraction for mineral products or the place of harvest for crops (see Art. 48a TmPA). If the natural product undergoes essential processing, it is considered to be a foodstuff. For instance, a piece of wooden furniture is an industrial product; whereas a piece of wood is considered to be a natural product.
For foodstuffs, two cumulative conditions must be fulfilled (Art. 48b TmPA):
- At least 80% of the raw material weight or the ingredients that it is composed of must come from Switzerland; for milk and milk products, this proportion is increased to 100% of the weight of milk of which it is composed;
- The processing that gives a product its essential characteristics must have taken place in Switzerland (e.g. processing milk into cheese).
A ratio of 80% of the weight is an adequate compromise between higher requirements (e.g. 100%), which has little regard for the economic reality, and a lower ratio, which does not meet consumer expectations. The new legislation provides for several exceptions to the 80% criteria in order to take into account the realities faced by those industries that process raw materials. Therefore, natural products that do not exist in Switzerland (for example, cocoa) or which are temporarily unavailable for reasons completely independent of the producers (for example, due to bad harvests resulting from bad weather or a livestock epidemic), can be excluded from this calculation. The provision for raw materials that are not available in sufficient quantity in Switzerland is determined according to their self-supply rate:
- If the self-supply rate is less than 20%, the raw materials concerned are not taken into account at all;
- If the self-supply rate is between 20% and 49.9%, then only half of the raw materials concerned is taken into account;
- If the self-supply rate is at least 50%, all of the raw materials concerned are taken into account.
Additional exceptions and flexible regulations have been introduced by the Ordinance on the Use of Swiss Indications of Source for Foodstuffs (HasLV; in German), in particular:
- A 'bagatelle clause' for ingredients that are insignificant in terms of weight, i.e. a pinch of salt (see conditions under Art. 3 para. 4 HasLV;
- The basis for the calculation are the ingredients (see Art. 3 para. 1 HasLV);
- A flexible regulation for taking semi-finished products into account in the calculation (Art. 3 para. 5 and Art. 4 para. 2 HasLV);
- A ‘quality exception’ for natural products that cannot be produced for a specific purpose in Switzerland due to technical requirements (e.g. certain flours for biscuits). This exception may only be used under the conditions of Art. 9 HasLV;
- Swiss water may be included in the calculation for beverages when it is a primary constituent (i.e. for beer or mineral water). It may not be used for diluting (e.g. in fruit juices made from concentrates; see Art. 3 para. 3 HasLV);
- The calculation may made based on the average flow of goods in a calendar year (Art. 4 para. 1 HasLV);
- It is possible to indicate the indication of source for a single ingredient (e.g."Lasagne made with Swiss beef"), if the conditions of Art. 5 para. 5 HasLV have been met;
- The inclusion of certain agricultural areas for determining a Swiss indication of source for foodstuffs or natural products (e.g. Liechtenstein, French free zones around Geneva and agricultural regions farmed since 1 January 2014, etc. Art.2 HasLV).
The industrial products category includes all products that are neither natural products nor foodstuffs. Two cumulative conditions must be fulfilled in order to be able to use a Swiss indication of source (Art. 48c TmPA):
- At least 60% of the product's manufacturing costs must have been generated in Switzerland;
- The activity that gives a product its essential characteristics must take place in Switzerland (e.g. the assembly of a machine).
As regards the first condition (60% of the manufacturing costs generated in Switzerland), this is generally defined by the costs of the raw materials and semi-fabricated parts, spare parts, as well as labour and overhead costs associated with the production. In addition, costs associated with research and development can also be included in the calculation; the same applies to costs associated with quality assurance and certification which are legally prescribed or standardised in an economic sector. On the other hand, costs associated with marketing a finished product (e.g. advertising and marketing expenses), as well as costs related to packaging the goods and customer service are excluded from the calculation because they do not directly contribute to the manufacture of the product. In other words, a company must classify the various costs of a product according to whether they are "Swiss" or "foreign" costs. If the Swiss share of the costs is equivalent to at least 60%, then the indication of source "Swiss" may be used. However, a company must only prove that the legal requirements concerning the origin have been respected in a case of legal dispute.
Not included in the 60% manufacturing costs are natural products that cannot be produced in Switzerland (e.g. gold). Raw materials, for which it is clearly established in accordance with an ordinance or a publicly available information from an industrial branch that there is insufficient availability in Switzerland due to objective reasons, may also be excluded from the calculation. The second cumulative criterion is that the activity that gives the product its essential characteristics must take place in Switzerland. This activity can be the manufacture itself (for example, the assembly of a watch or the manufacture of a fabric from fibres) or also the research and development of the product. In the latter case, at least one essential manufacturing step of the product must actually be carried out in the place of origin in order to ensure an adequate ‘physical' connection to this place.
Additional exceptions and flexible regulations have been introduced by the Trade Mark Protection Ordinance (TmPO; in German), in particular:
- A ‘bagatelle clause’ that allows components that play no significant role in the product to be excluded from the calculation (for example, a screw ; Art. 52j TmPO).
- Companies may be flexible when accounting for semi-finished products for which they do not know the details of origin (Art. 52i TmPO).
- The cost of research and development that have already been amortised may still be included in the calculation (Art. 52g(3) TmPO).
Producers who do not fulfil the requirements of Swiss origin may make reference to certain specific activities concerning the product design or manufacture of the product or to some of its features which occurred in Switzerland (e.g. "Designed in Switzerland" or "Swiss Research") if:
- All of the specific activities stated on the goods (in this instance, the design or the research) took place in Switzerland;
- The word "Swiss" is not written more prominently in terms of colour, size and character type than the rest of the indication (i.e. "SWISS Research" would be an example of what would not be permitted).
The following indications, however, are not permitted in connection with this exception:
- Indications such as "Produced in Switzerland" are too general to be covered by this exception. They therefore cannot be used for goods entirely manufactured in Switzerland because they do not fulfil the general conditions of Swiss origin. Such a possibility would actually deprive the law of its substance and be contrary to its purpose.
- Affixing the Swiss cross next to a designation such as "Swiss Research" is misleading because consumers generally perceive the Swiss cross as a reference to the origin of a product as a whole and not as a reference to a specific manufacturing step. Consequently, the Swiss cross may not be used with an endorsement such as "Swiss Research" if the criteria concerning Swiss origin are not fulfilled.
A company may promote its services as being Swiss provided that its headquarters are situated in Switzerland and that the company is actually administered from Switzerland (Art. 49 TmPA). This second condition is to prevent the use of a simple post office box to create a sufficient connection to Switzerland. The new law also takes into account different company structures. Company subsidiaries and foreign branches of the parent company may use the indication of source "Swiss" under the following cumulative conditions:
- The parent company is headquartered in Switzerland;
- The parent company or one of its subsidiaries ̶ which is actually controlled by it and whose headquarters are in Switzerland ̶ is actually administered from Switzerland;
- The indication of source is used for services similar to those provided by the parent company or the subsidiary in question. These criteria ensure that the parent company, which itself is commercially active, is able to actually control the services offered by one of its foreign subsidiaries. In this way, the parent company reduces the risk of its own reputation being harmed by services of inferior quality offered by a subsidiary. For other structures in which a holding acts as a parent company without being active itself, at least one subsidiary must be headquartered in the same country as the parent company and it must offer similar services as the foreign subsidiary (group regulation).
No, they don't.
The origin of a product under indications of source law (e.g. "Swiss Made" appearing on a product) must not be confused with the origin of a product under customs law (e.g. Switzerland indicated on a certificate of origin).
As these two designations fulfil different functions (to indicate an origin and to apply specific customs tariffs respectively), "Swiss" goods do not have to fulfil the same legal requirements according to whether indications of source law or customs law is concerned. Harmonising the indications of source law with customs law would lead to absurd results. Under customs law, for example, a fish caught by a vessel sailing under the Swiss flag is considered as being "produced entirely in Switzerland". If the criteria determining the designation of origin "Swiss" were harmonised with the rules of origin governed by customs law, then a fish caught in the Indian Ocean by a trawler from Panama sailing under the Swiss flag could also be sold under the Swiss designation "Swiss Delice" or "Swiss Sea Food" and be affixed with the Swiss cross.
The indications of source law defines which geographical designations (e.g. the Swiss cross or the "Swiss Made" designation) may be optionally used on products for advertising purposes. The foodstuffs law, however, provides for the obligation to declare the country of production and the raw materials of a food product on its label for reasons of public health protection and providing information to consumers. In order for these domains to be able to co-exist, mandatory indications under the foodstuffs law may not be used as a selling point. They must be limited to declarative indications concerning the product, which by definition do not primarily capture the attention of consumers. It is a fine line between these two domains because the design of the labelling and the perception of consumers are what are crucial. To avoid being misleading, the reference to the country of production under foodstuffs law may not, in principle, be written more prominently in terms of colour, size and character type than all other mandatory indications.
In terms of indications of source law, for example, it is forbidden to affix a large "Swiss cheese" designation on cheese manufactured with foreign milk, even if Switzerland is the country of manufacture under foodstuffs law.
Yes, they do.
The new criteria for industrial products also apply to watches. Details and additional criteria can be found in the "Swiss Made" Ordinance for Watches.
Roundtable on the protection of computer-implemented inventions
Roundtable on the protection of computer-implemented inventions
10.04.2019 | Event
The IPI at the Exhibition of Inventions in Geneva from 10 to 14 April 2019 - why not stop by and see us?