Upon expiration of a 60-month ‘grace’ period, TM owners are required to confirm the use of a TM in Switzerland, especially if there’s been an objection to its use or a cancellation request has been filed.
While analyzing a TM, the IPI (a Swiiss TM regulator) will focus mostly on the quality of the supplied evidence; hence, companies must ensure that the evidence provided by them complies with the IPI criteria, namey:
- a TM is to be used as a TM;
- each piece of evidence submitted must display a TM as registered.
Please note that the distinctive part of a TM must be reproduced on every piece of evidence.
Using TMs in Switzerland
The supplied evidence must demonstrate the use of TMs in all 3 regions of Switzerland (i.e. Swiss-Italian, Swiss-French & Swiss-German). The evidence must be conclusive enough & show that customers in all three regions have been in contact with TMs. Evidence confirming the use of TMs in other countries, including neighboring ones, won’t be taken into consideration (please note that this rule is applicable to well-known brands as well).
Under an agreement signed between Switzerland & Germany, non-resident companies can confirm TM registration in Switzerland by supplying proof of its use in either of the two countries.
By registering a TM in Switzerland, entrepreneurs can use it for up to 60 months (provided they’ve used it uninterruptedly). Evidence confirming its use is to be presented every 12 months. TM owners are encouraged to collect evidence once a month (or once in three months) over a period of 12 months.
There must be enough evidence confirming the use of a TM with a particular type of products/services & a particular type of business activities.
Switzerland: TM Protection
Evidence supplied by TM owners must prove the use of a TM with each category (and subcategory) of services/products specified in a claim contesting the use of a TM. If a TM is only used partially, its validity period won’t be applicable to services/products not included in the supplied evidence.
TMs must be used by their legitimate owners or 3rd parties authorized by them.
The presented evidence must also conclusively demonstrate a link between registered TMs & their owners. If a TM is used by authorized 3rd parties, a document confirming the use of a TM in Switzerland (e.g. a license agreement) must be provided.
For companies belonging to the same group, extracts from registers of companies showing their relation must be provided. Using a TM in Switzerland by authorized 3rd parties must also be corroborated by documentary evidence, and not just verbal arguments.
Proving TM Use
Evidence corroborating the use of TMs may include (but isn’t limited to):
- copies of invoices;
- brochures, catalogs or PLs;
- lists of customers;
- 3rd party testimony;
- annual financial statements.
The evidence must ensure objectivity & can’t be based solely on TM owner's statements or information collected from databases. Please note that sales figures, ads, lists of customers or any other evidence of this kind can be called into question & is, therefore, cannot be deemed conclusive.
Documentary evidence to which consumers can get unobstructed access (e.g. brochures/catalogs, PLs, invoices, adverts, websites & the like is considered objective & needn’t be additionally proved.
Interested in registering a TM in Switzerland or Europe? Need advice on TM regulation in Switzerland? Why not contact IQ Decision UK?