How to protect brands in Switzerland against non-use effects
Clarifying a name often leads to encountering several similar earlier marks – but not all of these are necessarily barriers to registering and using a new mark. Instead, applicants must assess the legal and practical risks of a potential infringement claim or opposition by the conflicting mark owner on a case-by-case basis. To do this, it is helpful to know whether the conflicting trademark is being used and – if so – when, how and to what extent.
The grace period
In Switzerland, no use must be proven or an intention to use asserted for the registration of a trademark. Furthermore, applicants do not have to prove use of a mark after registration in order to keep it in force. However, the protection is only effective if the trademark is used (Art. 11 Para. 1 Trademark Protection Act (TMG)).
If a trademark has not been used for an uninterrupted period of five years – the grace period – its proprietor cannot assert his rights in that trademark unless there are good reasons to do so (Article 12 (1) MPG). For this reason, the trademark cannot be attacked during the grace period.
For Swiss registrations, the grace period begins after the objection period has expired (three months after publication of the registration) or after the end of the objection procedure. For Swiss designations in international registrations, the grace period begins with the publication of the grant of protection by WIPO or, if a provisional refusal has been made, on the day of the grant of protection (type of trademark protection (TMPO), part 6, number 5.2.1 and part 7, number 2.4 of the trademark guidelines of the Swiss Federal Institute of Intellectual Property (IPI) of March 1, 2022).
The grace period also applies if the use of a trademark is interrupted, beginning with the end of use (Federal Court decision 4A_265/2020 LUMIMART / LUMINARTE). If use is resumed, the trademark rights are restored with effect from the priority or filing date – unless non-use was claimed before the resumption (Article 12 (2) Trademark Protection Act). Mere assertion of non-use (e.g. registered letter) is sufficient to prevent assertion of the mark even if its use has resumed after the assertion.
Non-Use Requirements
Five consecutive years of non-use are grounds for the partial or full revocation of a trademark in Switzerland. It is not ex officio deleted, but third parties can contest them for this reason.
The non-use claim can be asserted in a cancellation action before the civil courts or the IGE (Art. 35 onwards TmPA). Each party can raise the complaint without prejudice to their interest in action (Art. 35a para. 1 VMG; Federal Administrative Court judgment B-2627/2019 SHERLOCK).
In Switzerland, this claim can also be asserted by the defendant in opposition proceedings. It is sufficient to merely refer to the non-use of the opposing trademark (Art. 32 MSchG); this differs from an action for cancellation, in which it must be proven that non-use is likely (Article 12 paragraph 3 VMG). Instead, the burden of proof lies with the opponent, who must comply prima facie Provide evidence of use or reasonable reasons for non-use. Otherwise the objection will be rejected.
Any objection to non-use must be raised in the first response to the objection, not later (Article 22 (3) VmPO). If the five-year period expires later, an action for cancellation can be brought before a civil court or the IGE and the suspension of the opposition proceedings can be requested until the decision on the validity of the opposition trademark has been made (Art. 23 (4) TmPO).
If non-use is asserted, whether in opposition or cancellation proceedings, it must be proven that use of the trademark was probable in the five years prior to the application for non-use (Article 32 MSchG).
Similar to the European Union, Switzerland does not require proof that a trademark has been in continuous use for five years. In order to avoid revocation, it is sufficient that the use took place during part of the relevant period. Therefore, recent use may be sufficient (Part 6, Section 5.3.2 and Part 7, Section 4.2 of the IPI Trademark Guidelines).
Proof of use of a trademark
In Switzerland, as in other jurisdictions, the point at which a mark is used and the point at which use ceases plays a crucial role in determining whether it is susceptible to cancellation claims for non-use during the relevant period is. In addition, it is crucial in what form, for which goods or services and to what extent the mark is used.
If a problematic existing mark is identified, monitoring its use and filing a cancellation action at the right time (e.g. via a warning) can be a way for applicants to overcome it.
Conversely, accession to dated proofs of use can be advantageous for the protection of existing trademarks. This process helps determine the safety of a mark before the owner(s) consider making a claim against an infringing use or mark.
However, not all evidence is originally dated. Notable examples include temporary content on the web (e.g., newsletters, blog posts, product pages, and social media posts) or regularly updated corporate materials (e.g., product photos, business cards, and packaging boxes). With this in mind, timestamp documents can be a good way to provide data for all materials. Blockchain technology is particularly helpful in streamlining this endeavor and efficiently and securely dating large amounts of evidence.
With the dating of evidence comes the issue of preservation. In trademark disputes, it is advantageous to have evidence available immediately and immediately. In some cases, it can also help claim broader trademark protection by showing a secondary meaning.
Optimal collection of dated where-used lists requires following a methodology based on sound practices, such as: e.g.:
- appointing a dedicated person to oversee the collection of evidence;
- Identify key operational touchpoints in each relevant department (e.g., marketing, finance, sales, and information technology);
- Prepare and send guidelines on appropriate evidence; and
- Automate the debt collection process as much as possible using online brand monitoring tools and blockchain, which makes it easier to keep documentation on a regular basis and avoid changes.
It is not difficult to envision a future where such documentation becomes a standard accompaniment to trademark portfolios, possibly in the form of a timeline filtered by goods or services, date, type and evidential value. Such a development would make it possible to develop an objective index of use and related risks of revocation, which would help lawyers launch campaigns to advise operational teams on proper use and collect evidence of it. This index could also be helpful in the brand evaluation process.
Once a trademark is registered, maintaining accurate and structured evidence of its use can be crucial in any litigation. It also makes the brand more resilient to challenges and more valuable too.