Comments sought on revised registration guidelines

The Swiss Federal Institute of Intellectual Property (IGE) has published a revised version (available in French and German) of its guidelines on trademark application, examination, registration and opposition proceedings. Interested parties are invited to submit comments and suggestions by March 18 2005. The revised guidelines will enter into force on July 1 2005.

The main objective of the revision is to adapt the guidelines to the most recent legal and practical developments in the IGE's registration practice. Section 1 explains in some detail the application process and issues related to the classification of goods and services. It also clarifies the requirement of graphical representation for non-traditional trademarks (eg, three-dimensional shapes, moving images, scents, colours and holograms). Section 2 covers renewals and transfers, Section 3 deals with international applications, while Section 5 provides updates on opposition proceedings.

The most important changes, however, concern the IGE's examination of absolute grounds for refusal, in particular whether the sign is distinctive or otherwise belongs to the public domain (Article 2(a) of the Swiss Trademark Act). To this end, the guidelines draw a basic distinction in Section 4 between conventional signs (eg, words, devices and combinations of both) and non-conventional signs (all other trademark types). The IGE applies a higher threshold for non-conventional signs to pass the examination test. It argues that these signs are usually not considered by consumers as indicating commercial origin and therefore they may not be monopolized by one party. The guidelines then specifically address the various trademark types, introducing some important changes for, among other things, three-dimensional signs, acoustical signs and signs indicating a product's geographical origin.

It should be noted that the guidelines do not constitute binding law. They merely, but nonetheless importantly, reflect the IGE's interpretation of the Swiss Trademark Act and Ordinance. Thus, they are an indispensable tool for trademark applicants and their advisers.

The revisions had become necessary following changes in law and practice. However, the proposed guidelines raise the threshold of registrability for non-conventional trademarks. The IGE's choice to categorize trademarks as 'conventional' or 'non-conventional' may soon be outdated as it is based on the current view of conventionality. A more flexible approach, focusing on the fundamental issue of whether a sign is sufficiently distinctive and able to indicate the commercial source of the goods and services would have been better suited to today's ever-changing business environment.

Matthias U Studer, Walder Wyss & Partners, Zurich