FAQ
Trademarks
Clients frequently ask us the following questions on the subject of trademarks:
1.
Do we absolutely have to arrange for a product name to be protected as a trademark in order that we can use it?
No. In some countries (e.g. Germany, Great Britain and USA), trademark rights can under certain circumstances be acquired simply by the use of a sign. Nevertheless, you can generally prevent the use of the same sign by third parties more easily if you have a registered trademark.
2.
We have already divulged the planned product name. Do we now have to rename the product in order to be able to obtain trademark protection?
No. In contrast to patents, the prior publication of the sign is not a bar to registration. Care must be taken, however: it happens very often that trademark applications are filed by third parties for signs in respect of which a trademark application was either not filed at all, or was filed too late, by the actual originator. Although trademarks applied for in bad faith can be cancelled, proving bad faith can be difficult in an individual case.
Sometimes it is advantageous if the sign has become established on the market even before the application: specifically, signs which were originally not distinctive can nevertheless be registered if it can be proved that they have acquired distinctive character through use.
3.
There are different symbols around: what’s the difference between the symbols ™ and ®?
The symbol ™ originates from the common-law world and is used there primarily for unregistered trademarks. It is also used in many other countries as an indication that a trademark application has been filed but that a trademark has not been registered. Trademark rights do not come into being simply as a consequence of the affixing of the ™ symbol; this occurs only once the trademark has been registered. However, identification by means of the ™ symbol can sometimes be helpful in the event of disputes, e.g. under the Law against Unfair Competition (UWG).
On the other hand, the symbol ® identifies a trademark that has already been registered. If the symbol is used for trademarks that have not yet been registered, this is in many countries, including in particular Switzerland, deemed to be a breach of the Law against Unfair Competition.
4.
Someone is infringing our trademark. What can we do about this?
Firstly, a number of issues must be looked into:
Is the trademark already registered, or is it still at the stage of the application procedure?
In most countries (including Switzerland) third parties can only be prohibited from using the sign on the basis of a registered trademark.
Might it be possible for the trademark to be cancelled?
A registered trademark can lapse – even if the official renewal fees are paid in time. This can be the case, for example, if the trademark has not been used by the proprietor for a long time.
For which goods / services does trademark protection actually exist?
In general, a trademark does not enjoy absolute protection, but rather only ever for specified goods and services.
Finally, the way in which contact is made with the presumed infringer must also be chosen with care: it is possible (merely) to bring the patent to the attention of the presumed infringer, to send it a so-called request to show authorization or immediately to serve a warning letter including a draft cease-and desist undertaking. Which approach has the best prospects of success depends on the individual case. We are happy to advise you in this regard.
5.
Someone has recently had registered as a trademark a word which we have used for one of our products for many years. Are we still allowed to continue to keep the same name for our product? Is there anything we can do against the registration?
In Switzerland, the earlier user of the trademark has what is known as a right of continued use: if it has used the trademark before the trademark application was filed by a third party, then it may continue to use this trademark within the scope as used up to that point. In practice, being limited to the previous scope can be very restrictive.
However, such a right of continued use does not exist everywhere; in particular, it does not exist in Germany. Even if someone has used a sign for many years before the third party files a trademark application, he or she can be subject to an action for trademark infringement.
If there was no prior use in Switzerland, or if this cannot be proven, then there are further means of recourse: for instance, an opposition can be filed within three months after publication of the trademark registration. Such an opposition can, however, only be substantiated on the basis of an earlier trademark of one’s own (the examination relates only to what are known as relative grounds for exclusion of protection). As an alternative to this, a cancellation action may be brought (even after the opposition period referred to). Here, other grounds for nullity may then additionally be relied upon – for example that the trademark has no distinctive character or that it is misleading (that is to say including what are referred to as the absolute grounds for exclusion of protection).
Do you have any more questions?
Please get in touch with us:
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+41 (0)71 913 95 55 |
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+41 (0)71 913 95 56 |
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