Switzerland is a party to most international treaties and conventions regarding (industrial) designs, including the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Geneva Act and the revised Hague Agreement Concerning the International Deposit of Industrial Designs.
Switzerland is a party to most international treaties and conventions regarding (industrial) designs, including the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Geneva Act and the revised Hague Agreement Concerning the International Deposit of Industrial Designs. Regarding jurisdictional issues and enforcement, Switzerland’s accession to the Lugano Convention on Jurisdiction and the Recognition and Enforcement of Judgments in Civil and Commercial Matters is relevant.
In terms of national law, designs are governed by the Design Act, which entered into force on July 1 2002. Further, the Design Ordinance contains subsidiary provisions primarily concerning the procedure and standards to be applied by the Swiss Federal Institute of Intellectual Property (SFIIP) as the competent registration authority. On January 1 2011 the Federal Code of Civil Procedure was enacted, replacing the separate codes of civil procedure in the 26 Swiss cantons. Regarding international matters, the Federal Act of Private International Law applies.
The Design Act does not grant protection for unregistered designs. This constitutes one of the principal differences from the EU Community Design Regulation. Unregistered designs may be protected under the law against unfair competition.
Under Swiss law, protection as a design extends to the shape of a product (or parts of a product) which is especially characterised by a combination of lines, surface, colours or material used. In principle, the legal definition (which largely adopts the definition of a ‘design’ set out in the Community Design Regulation) allows for the protection of all tangible features of a given shape.
In terms of requirements for protection, a design can be protected if it is novel (formal novelty) and original (substantive novelty). A design is considered to be novel if it is new at the time of deposit or priority of the design. If an identical design has been disclosed to the public before the date of deposit or priority, the design will be deemed not to be new. A design is considered to be original if its major characteristics (ie, the overall impression) differ substantially from those of designs which are already publicly known. As the competent registration authority, the SFIIP does not examine the novelty of a design in the course of the application procedure. By means of a legal action (which may be filed at any time), third parties can challenge the validity of a particular registration. Lack of novelty can also be used as a defence in court if the owner of a design files a legal action based on alleged infringement.
The protection of a design begins from the date of filing and lasts for five years, with the option to renew protection for another four five-year periods. Thus, a design can be protected for a maximum of 25 years. Protection is conditional on full payment of the renewal fee for each period. The extension of the maximum protection period was one of the major changes made to the former designs law (in force until June 30 2002). The new maximum protection period automatically applies to designs registered before July 1 2002.
The fee for a single design registration is Sfr200. A maximum fee of Sfr700 applies to the registration of six or more designs. Additional fees apply if more than one graphic description is to be published for a single design. The renewal fee is identical to the fee for the basic application.
A design may be registered by a natural or legal person, irrespective of nationality. Applicants that do not reside or have a principal place of business in Switzerland must designate a representative (eg, an attorney at law) in Switzerland or specify a Swiss correspondence address.
If the applicant does not wish the granted design right to be published immediately on registration, it can request deferral for up to 30 months after the priority date
In order to register a design in Switzerland, the applicant must complete and file (in German, French or Italian) the Application for Registering Industrial Designs Form, available on the SFIIP website. Online applications are not available. Hence, the completed form must be sent to the SFIIP by post or email. The same application can be used for several designs (eg, of a particular collection) in the same class of goods and must contain one or more reproducible images of each design.
If the applicant does not wish the granted design right to be published immediately on registration, it can request deferral for up to 30 months after the priority date. During the deferral period, third parties may still use the design in good faith. Following registration of the design, the applicant receives a certificate and the registration is published online.
If an application is rejected by the SFIIP, the applicant can appeal the decision to the Federal Administrative Court within 30 days. The decision of the Federal Administrative Court can be further appealed to the Swiss Federal Court.
The SFIIP does not examine a design for novelty or originality in the course of the registration process, but checks only the formalities (registration leads to the legal assumption that the design is new and original). Therefore, a third party can legally contest the validity of a design by claiming, for example, that it was not new at the time of registration (revocation is never initiated by the SFIIP ex officio). The court must then decide whether the design is valid. If it is not, the design is cancelled in the register. Cancellation also follows at the owner’s request, or if the owner does not request the renewal of protection after five years or fails to pay the renewal fees.
Swiss law states that the overall impression of a design must be determined with respect to its memorable characteristics (a characteristic is memorable when its omission changes the character of the product)
As a registered right, a design gives its owner the right to prevent third parties from using it for commercial (including industrial) purposes, notably with a view to design-protected goods being manufactured, stored, offered for sale, distributed, imported, exported, handled in transit or held for such purposes. The owner’s exclusive right to use the design is principally limited to commercial use. Therefore, the owner cannot prevent another person from using a protected design to make and wear a dress with identical characteristics, for example. However, the import, export and transit of commercially produced goods with the same or a similar design are prohibited in Switzerland.
The scope of protection of a design covers not only the use of identical designs, but also the use of designs that copy the relevant features and therefore convey the same overall impression. Swiss law states that the overall impression of a design must be determined with respect to its memorable characteristics (a characteristic is memorable when its omission changes the character of the product). Thus, mere differences in detail do not result in a sufficient distinction from the protected design.
The owner of a design may enforce its rights by threatening or taking legal action. Typically, the owner of the design right initially sends a letter to the infringer requiring it to cease infringement and desist from future infringements. However, a warning is not required before commencing litigation. If the alleged infringer does not comply, the owner of the design can bring a civil action seeking relief (eg, a permanent or preliminary injunction, destruction of goods, damages or account of profits). In addition, it can request Customs to withhold infringing goods.
In order to initiate the main court proceedings, the owner of the design right must file a statement of claim indicating the remedies sought against the defendant. Only attorneys at law admitted to the Bar can represent parties before the courts in design law litigation. Design law proceedings are not assigned to a specific federal court; rather, each of the 26 Swiss cantons has a specific court which hears these cases. The defendant may then file a statement of defence and/or a counterclaim refuting the infringement claim and asserting the invalidity of the design right. In this case, the courts may deal with infringement and invalidity simultaneously. They will typically deal first with invalidity and, if the design is held to be valid, then with the alleged infringement.
After the briefs have been exchanged, the court decides whether witnesses will be heard. An expert may be appointed and other evidence taken. An oral hearing can be held, but is not mandatory (the parties have the right to refrain from such hearing).
Design rights cases are tried and decided by a judge without a jury. The decision of the relevant cantonal court can be appealed before the Swiss Federal Court within 30 days. The duration of design infringement proceedings depends on the complexity of the case and the number of defences raised. In general, design law infringement proceedings are concluded within one to two years.
If the plaintiff is in a position to prove a prima facie case of infringement or validity and irreparable harm, the court will grant a preliminary injunction. In urgent cases and where there is a strong prima facie case, the court may also grant an ex parte injunction at the applicant’s request. In these cases, the ex parte injunction requires confirmation in inter partes proceedings. The duration of preliminary injunction proceedings depends on the complexity of the circumstances. In general, such proceedings are concluded within four to 10 months. In cases where a preliminary injunction is granted, main proceedings must be initiated within 30 days to confirm the injunction.
Ownership changes and rights transfers
Due to the freedom of contract under Swiss law, design rights (or parts thereof) can be assigned and licensed at the will of the parties. However, the assignment of a design right must be agreed on in writing in order to be legally valid. Such assignment is binding on third parties only if it is recorded in the register. The licensing of a design right can be exclusive or non-exclusive. A granted licence may also be recorded in the register. Design rights may be pledged and can be the subject of attachment and foreclosure.
Under Swiss law, the subject matter of designs may also be protected by copyright and trademark law or under unfair competition law.
A design will be granted protection based on the Copyright Act if it qualifies as an intellectual creation with individual character. According to Swiss jurisprudence, copyright protection is generally not granted to products that are considered to be mere industrial products. Under Swiss law, copyrightable works are protected as of the moment they are created and for 70 years after the author’s death. The registration of works is neither necessary nor possible.
Based on the Trademark Act, the three-dimensional (3D) design of a product (the shape or parts thereof) will be granted protection if the design is distinctive and does not infringe prior designation rights. In general, 3D designs can be registered as a trademark only if their shape is not merely a result of technical necessity. Further, the design may not represent the essential characteristics of the product itself.
The Act against Unfair Competition provides a further legal means to protect designs. However, the scope of such protection is generally limited to cases where products (or parts thereof) are precisely imitated and commercialised in a way that causes a likelihood of confusion with the protected product (or parts thereof).
Lenz & Staehelin
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Jürg Simon (Prof. Dr iur, attorney at law, Exec MBL-HSG) is a partner at Lenz & Staehelin. He has been considered a leading lawyer in intellectual property, competition law and related fields in Switzerland for many years (advisory work, litigation, IP-related arbitration). Before joining Lenz & Staehelin, he was a director at the Swiss Intellectual Property Institute and partner in an IP boutique. He co-heads the IP group of Lenz & Staehelin.
Stefan Bürge (attorney at law, LLM) advises on and litigates IP and general commercial matters. His practice includes licensing and distribution agreements, trademarks, unfair competition, copyright, media law and IP aspects of transactions.
Adrian Wyss (Dr iur, attorney at law) is an associate in the Zurich office of Lenz & Staehelin. His practice focuses on intellectual property, competition, IT, telecoms and media law and commercial litigation in general. He represents clients in litigation before the Swiss courts and in administrative matters before government authorities. He also advises on the IP aspects of transactions. Dr Wyss is a member of the firm’s IP, dispute resolution, competition and IT, telecoms and media practice groups.