FREQUENTLY ASKED QUESTIONS ABOUT INTELLECTUAL PROPERTY
OUR ANSWERS TO FREQUENTLY ASKED QUESTIONS
Can a trademark be registered in one’s name?
A trademark can be filed by a person or a company. The sooner it is registered, the sooner the rights are acquired. If the company is not yet registered in the commercial register, it may be wise to register the trademark in its own name and then transfer it to the company once the latter is registered. This way, the trademark will become part of the company’s assets and contribute to its value.
Why monitor a trademark?
The Swiss Institute does not check the availability of a trademark before registering it. It is therefore necessary to keep a watchful eye out for any new filing of a trademark identical or similar to yours. We watch the Swiss and foreign registries. We inform you of any trademark of concern so that you can take appropriate steps to prevent its registration. This information also allows you to detect a possible project or launch of an activity that could harm your brand and your business. We advise you on the actions to be taken to stop the infringement of your rights.
Should I register other variants of my domain name?
Yes, it is strongly advised to build a reservation strategy that allows you to have a solid portfolio, with the right choice of name, variants and extensions. This will help protect you from abusive copying of your domain name, trademark or business name, such as cybersquatting.
Can I be informed before a domain name is reserved by someone else?
Yes, it is possible to set up a watch for new domain names. This monitoring is possible if a trademark for the monitored name has been registered in at least one country. For domain names that are already available for reservation, it is advisable to set up a protection strategy and reserve all the domains that are still free. For domains that have already been reserved, it is also possible to set up a monitoring system to detect when these are not renewed.
Does a trademark allow to prevent the use of a domain name?
This depends on the use of the domain name. If the domain name is used on the Internet to offer and promote products and/or services similar to yours and in the same geographical area, your trademark will allow you to intervene against its use.
I have reserved a domain name. Why should I register a trademark?
Trademark protection protects the identity of goods and services in the real economy and allows you to intervene against copies. It confers an exclusive right of use, unlike a domain name which is only a de facto monopoly. In addition, registering your trademark allows you to be informed of new domain name extensions.
Should a domain name be protected?
A domain name is not a title of protection, it is only a technical means to locate a website. Reserving a domain name allows you to operate your website but does not give you any intellectual property rights.
How can a copyrighted image be used?
It is necessary to contact the author or the rightful owner and obtain his or her permission to use the image for purposes other than private (on your website, your company’s social networks, a newsletter, paper advertising, for example). Since 1 April 2020, any photograph is protected by copyright in Switzerland. In the case of authorisation, the author or his/her beneficiary will indicate what type of mention he/she wishes to see (copyright mention under the photo, a link to his/her website or simply his/her name). The legal consequences of not granting permission can be more or less significant and need to be assessed by a copyright specialist in the jurisdiction of the country concerned.
Can I use images that are available online?
An image belongs to its author and permission is needed to use it for anything other than private purposes (e.g. on your website, your company’s social networks, a newsletter, print advertising). The mere fact that images are available online, on Google for example, does not mean that they are free to use. Images available on “Google Images” are generally subject to copyright. Some images expressly mentioned as free of rights can be used without prior agreement of the author or right holder, under certain conditions which it is strongly recommended to study before any commercial use.
How can I take advantage of my copyrighted work?
You can grant licences, i.e. authorise the use of your creation, under the terms of the contract, in return for remuneration. The author’s economic rights (reproduction rights, performance rights, etc.) can also be transferred. In addition, the author can obtain remuneration by asserting his or her rights to adapt and translate his or her work.
How to know if I am infringing someone else’s copyright?
In Switzerland, a work is copyrightable if it fulfils the conditions specified in Art. 2 para. 1 of the Copyright Act (CRA), i.e. if it is a creation of the mind with an individual character (a stamp of its author). Ideas are not protectable in themselves. The question of whether a creation is eligible for copyright protection is therefore assessed on a case-by-case basis as part of a legal analysis.
Is there any point in protecting a long-used design?
You can no longer protect your designs that have been disclosed for more than one year under design law. You remain protected by copyright where applicable. However, you can register new variants of your original product provided that the conditions for protection are met.
Is it necessary to be represented to file a design in Switzerland?
This is not mandatory for a Swiss design application. However, it is necessary to provide a postal address in Switzerland.
The assistance of an intellectual property expert is nevertheless highly recommended in order to ensure that one’s design is registered at the most judicious moment of the project, satisfies the registration requirements and will receive optimum protection according to the choice of registered views. Representation is also essential for international filings (e.g. USA, China).
Does copyright protect against copies?
Yes, it is possible to claim copyright on the shape of a product. However, copyright arises from the mere fact of creation and is not registered in Switzerland. It can be difficult to prove one’s copyright. A design registration, which is the subject of a title deed (registration certificate), offers additional protection to copyright and allows you to strengthen your protection and position against copying. This title also has a deterrent effect. It will therefore be much easier in practice to prevent third parties from copying your design with a protected title
What are the risks of not protecting a design?
Without a title, you only have copyright in your design, assuming the conditions for copyright protection are met. You will not have a title to enforce your rights in the event of copying. Above all, the protection process must be initiated as soon as the design is created, because then the condition of novelty will no longer be met and it will no longer be possible to protect it.
What are the benefits of protecting a design?
Registering your design gives you exclusive title to the aesthetics of your product. Only you have the right to manufacture and sell products with this particular shape and aesthetic, to authorise a third party to use it and to transfer your right to the design. This title allows you to stop the use of possible copies by your competitors by giving you access to design infringement proceedings, should amicable settlement prove unsuccessful. It also has an important dissuasive effect. It protects your reputation and your investments.
In which countries should a trademark used on a website be protected?
It is relevant to protect the trademark in the countries where the goods and services are marketed. A targeted protection strategy must be studied in order to control the costs of the project and to choose the most appropriate countries, according to the different possible protection channels.
Is it necessary to be represented to file a trademark in Switzerland?
This is not necessary in Switzerland. However, an address in Switzerland must be provided for the filing. For a foreign filing, it is necessary to be represented by an agent domiciled in the country of filing. In any case, it is advantageous to be advised for the filing in order to file the most relevant sign and the list of adapted products and services, with the aim of the strongest possible protection as well as to reduce the risk of objection to the registration by the Federal Institute of Intellectual Property. A well-prepared application also facilitates subsequent protection abroad.
Is a trade name protected against copying?
Yes, but to a much lesser extent than with exclusive rights in the name. With a business name, the risk of confusion is difficult to establish and the scope of protection may be limited locally. Trademarks, on the other hand, have legal effect throughout the national territory. Combining the registration of a business name with trademark rights provides effective protection for the company name and thus its identity.
What are the risks of not protecting a trademark?
Without protection, you have no exclusivity over your trademark. Your possibilities of action against copies are limited to unfair competition, with less chance of success than through infringement action. Your trade mark is likely to be diluted, to lose its reputation, to lose its value and to become just another name that can be used by anyone. Moreover, a third party could register it before you, which would be a brake on the development of your activities under this name and logo.
What are the advantages of protecting a trademark?
Trademark rights will give you the exclusive right to use and dispose of the name and its logo in your field of activity. Creating a visual identity is an investment. Registering a trademark allows you to protect this investment and gain a competitive advantage. You own the rights to the trademark, which adds value to your business. You also preserve the distinctive strength of your Trademark and its recognition by your customers.
For your success
Based in Geneva, SEDIN assists you in protecting, enhancing and defending your trademarks and intellectual property assets in Switzerland and internationally.