Lenz & Staehelin
Which aspect of your work do you enjoy most and why?
I particularly like the variety of problems and the interdisciplinary nature of IP law. Our tasks are regularly embedded in highly complex and abstract legal dogmatics, yet they usually concern tangible everyday products and services. I enjoy being challenged in an interdisciplinary way and working with clients and colleagues from a wide range of specialisms and industries. I consider this a privilege that distinguishes our field of work from many others.
What impact has the covid-19 pandemic had on your practice and what permanent changes do you expect as a result?
The pandemic has acted like a magnifying glass. It has relentlessly exposed the shortcomings and weak points in politics, economies and society. However, it also clearly shows the strong points and the importance of research, innovation and trust in products and services. This capacity for innovation requires a legal framework that promotes trust. But not only that: in order to dare to launch something new, self-confidence is necessary and the belief that one will be able to adequately reap the fruits of one’s own labour. With regard to brands, covid-19 has highlighted how important these can be as bearers of trust, as signposts in the jungle of confusing and often contradictory information. Who would have thought that with vaccines - at least in some countries - trust in the brand could determine whether people get vaccinated? On the surface, this may seem a luxury issue. But on closer inspection, it proves that especially in times of crisis, trust matters. IP rights, especially trademarks, are perfectly capable of fulfilling this trust transmitter function.
The threshold to prove that a trademark is well known in Switzerland is extremely high. How should owners of famous brands go about demonstrating their notoriety in the country?
It is a partly unjustified prejudice that the threshold to being well known or famous is higher in Switzerland than in other countries. This is because some unsuitable proceedings have failed at this threshold. In addition, it is because, unlike in other countries, the fame of a mark cannot usually be examined in Swiss opposition proceedings. In fact, the Swiss civil courts are quite prepared in clear cases to accept the fame and notoriety of a trademark even without an evidentiary procedure. In all other cases, fame and notoriety must not only be asserted, but proven. The way to do this now is through demoscopic expert opinions. Here, a paradigm shift has taken place in the last 20 years. Whereas demoscopic expert opinions used to be regarded at best as party assertions susceptible to manipulation, they are now recognised as evidence or at least as weighty circumstantial evidence. Of course, this presupposes that they meet the highest professional standards and survive the stress test of being challenged by a counterparty. This can be achieved if legal and demoscopic experts work closely together. Swiss trademark law is open to the findings of empirical social research. However, like any expert opinion, they must meet the judicial quality requirements: they must be complete, comprehensible and free of contradictions.
What are some of the biggest challenges facing your clients at present – particularly when it comes to protecting their IP rights online?
The enforcement of IP rights in the online world has made great progress. Of course, it can still sometimes be tedious to track down infringers. However, the procedures introduced by many large platforms (eg, take down and stay down) are helpful and appreciated. The implementation of the new EU Copyright Directive will bring further progress here.
How do you expect IP licensing strategies to change over the coming years in light of new technologies?
For complex licences, hardly anything will change. In the area of mass licences, the trend for handling the entire licensing business model electronically looks set to continue. This will lead to general contractual terms and conditions, which must be agreed to electronically (so-called ‘take it or leave it’), becoming even more important. The result will be that the pressure to review the content of such general contractual terms and conditions (eg, under antitrust law with regard to the abuse of market power) will increase.
Jürg Simon is renowned as a leading expert in IP and competition law, advisory, litigation and transactional matters, with a specific focus on trademarks, designs, licensing, selective distribution systems, IT, media and geographical indications. He is also involved in significant patent litigation in the IT and food industry. Prof Dr Simon was a director at the Swiss IP Institute and is a professor of intellectual property at the University of St Gallen. He regularly authors publications on IP and competition topics.