Switzerland

The new ‘Swissness’ legislation – many years in the making – finally takes effect in 2017, setting out stringent conditions that must be met in order to advertise a product or service as Swiss. The already prestigious Swiss brand will likely become even more so as a result. For companies that make the grade, the new designation will be a major asset; but those which fail to qualify risk having their brands devalued – small and medium-sized enterprises in particular may struggle to meet the exacting new requirements. Even at this early stage, however, it is clear that the new law looks set to keep the country’s trademark professionals busy for some time. Meanwhile, the procedure for cancellation on the grounds of non-use is also changing, from a judicial process to an administrative procedure which should be quicker, cheaper and easier to conclude. This is expected to result in an uptick in challenges to registrations; the prospects thus look bright for the great and good of the Swiss legal market listed below.

Firms: enforcement and litigation

1
FMP Fuhrer Marbach & Partners
Lenz & Staehelin
Troller Hitz Troller
Walder Wyss
2
Homburger AG
Staiger, Schwald & Partner AG
Times Attorneys
3
Baker McKenzie
Junod Muhlstein Lévy & Puder
Pestalozzi Attorneys at Law Ltd
Schellenberg Wittmer
Weinmann Zimmerli

Firms: prosecution and strategy

1
E Blum & Co AG
FMP Fuhrer Marbach & Partners
Troller Hitz Troller
2
Baker McKenzie
Isler & Pedrazzini AG
Lenz & Staehelin
Times Attorneys
3
Bär & Karrer
Pestalozzi Attorneys at Law Ltd
Walder Wyss
Weinmann Zimmerli
Baker McKenzie
For an international perspective and commercially clued-up advice, brand owners need look no further than Baker McKenzie. Spearheading the IP team, Michael Treis is “one of the very best lawyers for worldwide prosecution strategy. He uses well-crafted arguments in contentious matters and is responsive and commercially minded. He doesn’t sit on the fence and will give clients a percentage chance of success”. He recently represented British American Tobacco in complex disputes with Philip Morris over e-cigarette branding; Unilever and Apple are other longstanding clients. Rising star Eva-Maria Strobel has taken a lead role in managing Swarovski’s worldwide portfolio, the stewardship of which was recently entrusted to the firm; she has been seamlessly coordinating brand protection for the famous jeweller across some 30-plus jurisdictions. Together, the two partners have also been robustly defending Estée Lauder Companies’ CLINIQUE mark; in collaboration with colleagues from other firm departments, they additionally shepherded a complicated and valuable acquisition of Kuoni’s European tour operating business to close. Treis and Strobel are members of both the Swiss and German Bars and work effortlessly across the Swiss/EU border.
Bär & Karrer
With corporate wisdom from other practice areas underpinning its advice, Bär & Karrer’s IP group has a sterling reputation for licensing, transactions and arbitration. Captaining the team is the brilliant Markus Wang: comprehensive IP know-how enables him to take a broad perspective to all briefs, while his academic grounding – he lectures at the University of Fribourg – lends theoretical sophistication to his work product. Wang is widely admired for his nuanced grasp of the issues at play in the biotechnology, healthcare and pharmaceuticals industries.
E Blum & Co AG
Filings, oppositions and strategy are all fortes for E Blum & Co. “It is the top prosecution practice in Switzerland – it has been around for 140 years and has a huge portfolio. Blum is a very efficient machine and its lawyers know a lot.” Polyglot Mathias Meyer speaks English, German, French and Italian. His “incredible knowledge” makes him a go-to guy for second opinions about prosecution matters. “If I need to discuss a matter, I call him. He is almost always right and is definitely my top contact in prosecution,” reports one peer. Partner and attorney at law Sven Capol shines in oppositions and infringement disputes, and has a real affinity for the fine print of licensing agreements. Brendan Bolli is another stand-out lawyer who adroitly handles matters across the trademark lifecycle.
FMP Fuhrer Marbach & Partners
Elite boutique Fuhrer Marbach & Partners has one of the most distinguished sets of “excellent IP professionals” in Switzerland. Its lawyers take a “pragmatic, hands-on approach, think ahead and are good strategically”. The firm has a broad client base, although the nutrition, food and beverage and pharmaceuticals sectors are happy hunting grounds. The former head of the Institute of Intellectual Property’s (IPI) oppositions department, Bernard Volken is a “terrific, pragmatic and solutions-oriented” all-rounder, although he is perhaps best known for his contentious prowess. “Berny is brilliant on the courtroom floor. He is very persuasive and extremely good at client handling – quite extraordinary.” Peter Widmer is another stellar litigator and “tremendously successful lawyer who is very thorough and precise”. Hailed as a “genius and a first-class attorney at law”, Eugen Marbach earns plaudits for his “perfect knowledge, sophisticated advice and friendly but professional demeanour”.

The A-to-Z trademark offering at Froriep is unfailingly geared towards achieving clients’ wider commercial objectives. The firm’s distinctly international outlook translates into a flair for cross-border brand protection; it works globally for a slew of heavyweight multinational brands. Back at home, meanwhile, a ground-breaking recent court victory set a new standard for the examination of sound marks. Leading the charge, Roger Staub dispatches even the most complex of trademark briefs with a sure hand, deploying his robust approach, “great knowledgeability and extensive network” to superb effect. He also chairs a number of committees and enjoys high standing internationally. Contentious whizz Frédéric Serra is a favourite among technology players; while prosecution and strategy sage Nicola Benz has deep knowledge of the life sciences.

Homburger AG
Homburger’s seasoned IP team is a compelling choice for Swiss and international brand owners alike. The firm has opted against developing its own filing capabilities, instead focusing exclusively on servicing the contentious and transactional needs of its clients – a USP that resonates with A-list brand owners in the automotive and industrial sectors in particular. Courtroom maestro Gregor Bühler is “efficient and thorough; he will not miss a thing”. An authority on marketing and advertising law, he provides cutting-edge insight where this intersects with trademark issues. IP and IT practice head Georg Rauber is a former president of the Zurich Bar Association and an expert on IP transactions and arbitration; he has practised at the coalface for 27 years and been a partner at Homburger for two decades.
Isler & Pedrazzini AG
Although Isler & Pedrazzini can handle any trademark mandate going, it wins warmest acclaim for its precision filing and prosecution. Unlike many of its competitors, the firm primarily acts for Swiss brands, both at home and abroad. At the helm is Michael Degkwitz, an influential figure with keen strategic nous. The tried and tested Corsin Blumenthal has developed niche expertise in anti-counterfeiting, particularly in China; he has a refined instinct for the issues at play, having written his doctoral thesis on the subject.
Junod Muhlstein Lévy & Puder
Full-service Junod Muhlstein Lévy & Puder is home to a tight-knit father and son IP team who together provide a full-bore trademark service. Its “excellent quality, great efficiency and wealth of specialist knowledge (the best in the country)” impress clients, who also appreciate the business-minded counsel they receive. “The firm’s legal advice goes hand in hand with an explanation of why its guidance makes sense from a commercial point of view and they make sure the client understands why a course of action should be taken.” The revered Michel Muhlstein has been a thought leader in the field since the 1970s. Son Laurent Muhlstein is “one of the very best IP specialists in the profession, despite his youth”; his sparkling communication skills are underpinned by fluency in French, English, German, Spanish and Italian.
Lenz & Staehelin
Intellectual property has long been a central pillar at Lenz & Staehelin, Switzerland’s largest independent outfit. The “huge litigation firm has a great team of outstanding trademark lawyers” and performs a lot of “high-quality, high-profile soft IP work”. Combining “theoretical expertise with practical litigation skills”, Jürg Simon “knows pretty much everything there is to know about trademark law, has a brilliant brain and is intellectually sharp”. A leading authority on geographical indications, he also previously served as director of the IPI. Fellow IP department co-head Thierry Calame is one of the most “charismatic and convincing lawyers in Switzerland, and is superb in arbitration and litigation”. Another shining light, Lara Dorigo has published prolifically on IP issues and is a favourite among concerns in the biotechnology and pharmaceutical industries. A major player in both the French and German-speaking parts of Switzerland, Meyerlustenberger Lachenal is “a leader in the trademark field, undertaking the full range of enforcement and prosecution services”. The firm is “well connected internationally, extremely responsive and gives client-oriented advice. It has exceptional breadth and depth of knowledge in the field”. Peers “respect its lawyers’ profound experience and professionalism, which usually brings about positive results”. Non-traditional marks are a real forte: the firm has handled complex colour trademark briefs for Deutsche Telekom AG, including an application to protect its magenta livery. It also registered 3D Community trademarks for furniture designs by Swiss outfit Vitra – marks which it successfully defended before the Office for Harmonisation in the Internal Market Boards of Appeal. The new Swissness legislation is another focus; the “extremely diligent, tactful and tenacious” Simon Holzer is one of the country’s most renowned experts on the subject and also advises major trade associations on developments in the field. Group head Michael Ritscher is an “elder statesman who is good at taking a high-level lead on cases and has gravitas in the courtroom because of his experience. His judgement allows him to discern the best overall direction for a case. His contribution is invaluable and he is my first choice for conflict of interest referrals,” enthuses one peer. Peter Schramm is a familiar face before the Swiss, German and EU courts; retail and fashion are strongholds for the anti-counterfeiting, design and advertising sage.
Pestalozzi Attorneys at Law Ltd
Full-service titan Pestalozzi Attorneys at Law has the necessary firepower to assemble a crack squad for any brand-related challenge. Heading the IP group is the versatile Lorenza Ferrari Hofer, who shines brightest at the intersection of trademark law and unfair competition law – a topic on which she has written and lectured extensively. Fellow partner Clara-Ann Gordon is another strong all-rounder who knows what it takes to get signatures on the bottom line of technology transfer and licensing agreements. Michèle Burnier “will play a very important role in the future of Swiss trademark law”; her talents lie in enforcement and arbitration. Colleague Thomas Legler is a tenacious litigator whose performances in the Swiss and EU courts are always assured. Together with Burnier, he is working for Advance Magazine Publishers International on a matter that centres on the question of whether the VOGUE trademark is famous. With 24 dedicated professionals on staff, Rentsch Partner is one of Switzerland’s largest boutiques, combining niche expertise with support structures which ensure that even the trickiest briefs are smoothly dispatched. The firm concentrates on advising Swiss-based clients on domestic and international brand protection. Focusing primarily on prosecution and strategy, soft IP specialist Gregor Wild “has great spirit and stunning legal knowledge, and is excellent in both practice and theory”. A dab hand at contracts, transactions and enforcement, “extremely good lawyer” Demian Stauber “has his clients’ interests at the top of his mind, but also has an understanding of the other side’s point of view”. Cogent courtroom advocate Christian Hilti is also gaining prestige in the IP arbitration field. Teammate Matthias Städeli combines far-sighted strategic advice on portfolio management with razor-sharp contentious skills.
Schellenberg Wittmer
The robust trademark enforcement practice at premier business law firm Schellenberg Wittmer has attracted prominent clients from across a range of industries. “Extremely responsive, quick thinking and results orientated”, IP division head Andrea Mondini is a “genuine team player”. He is commended for his practicality and strategic intuition, which “lead him to the right conclusions”. With Italian his mother tongue, he has helped to cement relationships with the prestigious Italian fashion brands which form a key part of the firm’s client base. Adding greatly to the team, Philipp Groz is “thoughtful and talented, producing well-considered solutions”. The pair have a rare specialism in IP arbitration, particularly in disputes arising from international licensing agreements. Their expertise in this arena is widely recognised and both frequently speak and write for influential audiences on the subject.
Staiger, Schwald & Partner AG
Efficient and responsive, the trademark practitioners at Staiger, Schwald & Partner have an instinctive feel for clients’ priorities – an approach exemplified by Christoph Gasser, formerly in-house counsel at Swatch Group. “Incredible intelligence, sound judgement, immense knowledge and sublime theoretical understanding” elevate him to the profession’s top table. He “always goes the extra mile”; clients are reassured by his “responsive approach and ability to explain extremely complicated legal matters”, and hail him as “one of the best trademark counsel globally and someone upon whom you can rely totally”. With a holistic offering that spans the trademark spectrum, impressive soft IP boutique Swissberg is a one-stop shop for brand owners of all stripes. It recently secured a precedent-setting victory for a major global player in the food and beverage sector in a case involving non-use. A staunch defender of clients’ interests, Christian Rohner is a natural litigator who pays forensic attention to detail and knows how to frame a case to get the best possible result. Michael Widmer is a solid all-round practitioner with a talent for complex enforcement briefs and a penchant for transactions.
Times Attorneys
Niche newcomer Times Attorneys is fast becoming one of the most talked-about IP law practices in Switzerland. Close teamwork makes for outstanding work product: a ‘four-eyes’ principle is the rule for all contentious mandates. The compact set-up provides the full suite of trademark services to a clientele drawn from a dazzling range of industries. The firm’s two star players rose to prominence as partners at top-tier firm Troller Hitz Troller. A leading light of his generation, Michael Noth is a “very dynamic, intelligent and creative attorney who is reliable and responsive”. He has won the respect of peers by co-authoring the leading Swiss treatise on trademark law. French-speaking Philippe Gilliéron is commended for his profound theoretical knowledge and understanding.
Troller Hitz Troller
The oldest boutique in Switzerland, Troller Hitz Troller celebrates its 75th anniversary in 2016. As home to some of the country’s best trademark professionals, it has the “expertise to match its high reputation”. Eight of its 13 attorneys at law are partners, who work on both prosecution and enforcement, giving them a panoramic perspective. The firm distinguished itself in the famous Nespresso wars and remains at the vanguard of complex disputes involving cutting-edge issues such as 3D and colour trademarks. “Excellent specialist trademark lawyer” Gallus Joller is a “smart, concise thinker and the leader of the new generation at this well-established firm”; he is an authority on likelihood of confusion issues. German, English, French and Italian speaker Patrick Troller continues to “deeply impress” fellow professionals with his contentious nous. A veteran of the IP scene, Martin Hitz has been a rainmaker at the firm since the 1970s.
Walder Wyss
When it comes to high-stakes trademark litigation, look no further than venerable institution Walder Wyss. Its partners “have outstanding expertise and a very hands-on spirit. They are on your side from beginning to end and will exchange thoughts with you at short notice. They see the bigger picture and are focused on the goals of the client”. The fashion industry is a happy hunting ground, with the firm representing a host of household names such as Hugo Boss and H&M. “Solutions minded and pragmatic”, Magda Streuli-Youssef “has been doing great work in this field for many years”. Markus Frick is an “uber-practical, no-nonsense lawyer who is extremely strong in enforcement”. “He is undoubtedly one of the best trademark lawyers in Switzerland,” enthuses one peer. “He can strategise on a high level with complex trademark litigation. He penetrates to the core of difficult legal issues quickly and arrives at sound solutions for the client. He navigates potential pitfalls with surprising ease. His leadership skills also come across.” Elder statesman Lucas David is still a towering presence on the Swiss IP scene.
Weinmann Zimmerli
Long esteemed for its prosecution work, Weinmann Zimmerli is now earning a burgeoning reputation for its contentious capabilities. The firm is currently working on a crucial case with significant implications for damages arising from the use of geographical indications. Having enjoyed exponential growth since its establishment in 2013, the firm blends academic distinction with practicality to provide astute guidance on trademarks and adjacent issues. Madeleine Schim van der Loeff “is responsive and makes difficult work look effortless”. Name partner Conrad Weinmann leads the litigation team and is respected for his profound knowledge and subtle intellect. Eminent boutique Wild Schnyder excels at prosecution and strategy, but is also home to a squad of accomplished litigators. With the support of sophisticated software and back-office systems, its practitioners can respond to even the trickiest briefs at lightning speed. An “excellent lawyer who is smart, precise and responsive”, Gabriela Taugwalder knows how to secure the best results for clients across multiple jurisdictions; she recently coordinated a global rebrand across some 30 countries worldwide for one. Ancillary expertise in advertising law also comes in useful. “Hands-on and focused on solutions”, Donald Schnyder is praised for his “broad experience, business savvy, intelligence, articulacy and proactive thinking”. “Formidable strategic thinker” Barbara Müller has “deep knowledge of her field’’.

Individuals: enforcement and litigation

Gregor Bühler - Homburger AG
Markus Frick - Walder Wyss
Christoph Gasser - Staiger, Schwald & Partner AG
Gallus Joller - Troller Hitz Troller
Eugen Marbach - FMP Fuhrer Marbach & Partners
Andrea Mondini - Schellenberg Wittmer
Michael Ritscher - Meyerlustenberger Lachenal
Jürg Simon - Lenz & Staehelin
Roger Staub - Froriep
Magda Streuli-Youssef - Walder Wyss
Patrick Troller - Troller Hitz Troller
Bernard Volken - FMP Fuhrer Marbach & Partners
Peter Widmer - FMP Fuhrer Marbach & Partners
Philippe Gilliéron - Times Attorneys
Simon Holzer - Meyerlustenberger Lachenal
Laurent Muhlstein - Junod Muhlstein Lévy & Puder
Michel Muhlstein - Junod Muhlstein Lévy & Puder
Michael Noth - Times Attorneys
Christian Rohner - Swissberg Ltd
Ralph Schlosser - Kasser Schlosser Avocats
Michael Treis - Baker McKenzie
Gregor Wild - Rentsch Partner Ltd
François Besse - Besselegal
Corsin Blumenthal - Isler & Pedrazzini AG
Thierry Calame - Lenz & Staehelin
Ivan Cherpillod - Bourgeois Avocats
Lara Dorigo - Lenz & Staehelin
Lorenza Ferrari Hofer - Pestalozzi Attorneys at Law Ltd
Robert Flury - Zulauf Partners
Clara-Ann Gordon - Pestalozzi Attorneys at Law Ltd
Philipp Groz - Schellenberg Wittmer
Christian Hilti - Rentsch Partner Ltd
Thomas Legler - Pestalozzi Attorneys at Law Ltd
Peter Schramm - Meyerlustenberger Lachenal
Matthias Städeli - Rentsch Partner Ltd
Demian Stauber - Rentsch Partner Ltd
Eva-Maria Strobel - Baker McKenzie
Gabriela Taugwalder - Wild Schnyder AG
Markus Wang - Bär & Karrer
Conrad Weinmann - Weinmann Zimmerli
Michael Widmer - Swissberg Ltd

Individuals: prosecution and strategy

Gallus Joller - Troller Hitz Troller
Eugen Marbach - FMP Fuhrer Marbach & Partners
Mathias Meyer - E Blum & Co AG
Patrick Troller - Troller Hitz Troller
Bernard Volken - FMP Fuhrer Marbach & Partners
Peter Widmer - FMP Fuhrer Marbach & Partners
Philippe Gilliéron - Times Attorneys
Felix Locher - Python
Barbara K Müller - Wild Schnyder AG
Michael Noth - Times Attorneys
Madeleine Schim van der Loeff - Weinmann Zimmerli
Donald N Schnyder - Wild Schnyder AG
Roger Staub - Froriep
Michael Treis - Baker McKenzie
Gregor Wild - Rentsch Partner Ltd
Nicola Benz - Froriep
Brendan B Bolli - E Blum & Co AG
Michèle Burnier - Pestalozzi Attorneys at Law Ltd
Sven Capol - E Blum & Co AG
Michael Degkwitz - Isler & Pedrazzini AG
Lorenz Ehrler - Bugnion Ballansat Ehrler
Lorenza Ferrari Hofer - Pestalozzi Attorneys at Law Ltd
Robert Flury - Zulauf Partners
Clara-Ann Gordon - Pestalozzi Attorneys at Law Ltd
Alexandra Manola - Katzarov SA
J David Meisser - Meisser & Partners AG
Georg Rauber - Homburger AG
Eva-Maria Strobel - Baker McKenzie
Gabriela Taugwalder - Wild Schnyder AG
Markus Wang - Bär & Karrer
Michael Widmer - Swissberg Ltd

Individuals: French region

Michèle Burnier - Pestalozzi Attorneys at Law Ltd
Ivan Cherpillod - Bourgeois Avocats
Lorenz Ehrler - Bugnion Ballansat Ehrler
Philippe Gilliéron - Times Attorneys
Anne-Virginie La Spada - BMG Avocats
Laurent Muhlstein - Junod Muhlstein Lévy & Puder
Ralph Schlosser - Kasser Schlosser Avocats

Luminaries

Lucas M David - Walder Wyss
Martin F Hitz - Troller Hitz Troller
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Issue 69