John Smith wants to protect his trade mark by registering it with the Swiss Federal Institute of Intellectual Property (IPI). The CEO of a small SME is well prepared. He has done his research in advance on what trade mark protection involves and what strategic considerations are needed. Mr Smith has also checked if his trade mark could conflict with other trade marks. The relevant search was carried out by a trade mark consultant. This clarification is part of what is known as an IP strategy – the be-all and end-all for strong protection. It cost Mr Smith some time and money. But, in return, the risk of conflict with competitors decreases drastically. Take a leaf out of Mr Smith’s book.
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Today, I’m going to register my trade mark
Registering a trade mark is not a science. By paying attention to a few key points, you will not be disappointed down the line. We take a look at what you should keep in mind.
Bei guter Vorbereitung ist man mit der Anmeldung in 20 Minuten am Ziel. Bild: iStock
1. Don't do the registration on your coffee break
Register your trade mark in Switzerland via e-Trademark. Read the information on the homepage carefully. If well prepared, the registration can be done in 20 minutes. Nevertheless, don’t just register the trade mark when you're on your coffee break or in a hurry.
2. Personal details
Choose a language and click on ‘Next’. Enter your personal details and email address. You will also receive a reference number. In combination with the email, you can use it to further process data online that has already been entered but not yet submitted.
3. Designate a representative
The applicant is free to designate a representative (e.g. a law firm). Applicants from other countries have to appoint either a representative or an address for service in Switzerland. The addresses of the proprietors and representatives are published in Swissreg.
4. Enter your trade mark
Now you can enter your trade mark. You can only submit one trade mark per application. Key information on the categories and types of trade mark:
- What can be protected as a trade mark?
- Which category of trade mark? (90% choose the individual mark)
- Choosing a type of trade mark (word mark, word/figurative marks and others)
5. The list of goods and services
The choice of goods and services is just as important as the trade mark itself.
In this step, you specify for which goods and/or services the trade mark should be protected. The first three classes of goods and services are included in the application. Each additional class costs 100 Swiss francs. Up until registration, both the trade mark and the list of goods and services can be amended free of charge. However, a significant change will result in the deferment of the filing date. Once registered, the trade mark can no longer be amended and goods and services can only be removed, not added.
Under ‘Search help’ you will find terms accepted by the IPI. However, under ‘Standard classes’, you can also select a range of broad terms (‘class headings’), which more or less cover the goods or services in the corresponding class.
You can check your prepared list of goods and services with the classification tool before submitting it to see if it corresponds to the IPI’s database. If this is the case, the most important prerequisite for submitting your application for a swift initial examination has been fulfilled. If there are no grounds for refusal, your sign will be registered following payment of the filing fee. However, if your list of goods and services corresponds to the database, you can be sure that it will not be objected to.
6. Kosten
Filing fee per trade mark (protection for ten years, renewable) CHF 550.00
Optional: Class surcharge (per class as of the fourth class) CHF 100.00
7. Submission
You're almost done! Take a moment to read through the application. You can then submit the trade mark for examination with the IPI.
Info on registering for trade mark protection
- During the registration procedure, the IPI does not check if there are possible infringements of earlier trade marks and company rights.
- A registered trade mark is valid for 10 years. It can then be renewed indefinitely for 10 years at a time.
- The trade mark must be used within five years of the registration.
- Goods and services can be removed, but cannot be added to registered trade marks.
Ask yourself the following questions:
- Do you want to hire a representative to act on your behalf? An attorney’s office, for example?
- Have you checked if your trade mark is treading on your competitors’ toes? Key word: trade mark search
- Do you want to operate with your trade mark in Switzerland only?
The process in graphic form:
https://www.ige.ch/en/protecting-your-ip/trade-marks/national-applications.html
Expedited trade mark examination
https://www.ige.ch/fileadmin/user_upload/schuetzen/marken/e/Erlaeuterung-VMP-e_01.pdf
Overview of the registration procedure
https://www.ige.ch/en/protecting-your-ip/trade-marks/national-applications.html
