What can be protected as a trademark?

In principle, all kinds of designations may be registered as trademarks, provided they are not inherently excluded from protection due to their complying with one of the following absolute grounds for refusal of protection:

• The designation consists of merely descriptive elements,
• the designation contains a deceptively misdescriptive element which is apt to mislead the public,
• the designation infringes the moral law of ethics.

Although a mark may not be deceptive, it may contain elements of a certain descriptive nature. However, marks comprising such descriptive elements are, depending on the degree of descriptiveness, more or less weak in distinctive power, and consequently enjoy only a narrow scope of protection. In other words, the more imaginative and hence more distinctive the designation is, and the less descriptive elements it includes, the wider is its scope of protection.

Marks can be pure word marks, combined marks (combinations of word and design elements), design marks and designations which consist of combinations of numbers or letters (acronyms), three-dimensional marks, sound marks or scent marks, although the latter two are very rare since they are difficult to represent graphically.

What is required for registering a trademark?

The minimum requirements for placing an application are:

• Exact name and address of the applicant
• List of goods and services for which the mark shall be registered
• 1 reproducible specimen of the mark if it is not a pure word mark
• Date and country of priority application if convention priority is to be claimed

The following documents are necessary, but may be post-filed:

• Power of attorney (simply signed -> download power of attorney) -> Power of attorney (English)
• At least one high quality print in black and white (Maximum size 8 cm by 8 cm)
• At least one high quality color print (in addition to the black and white print) if specific colors in the mark are to be claimed
• Priority documents (certified) in German, French, Italian or English

Where should a trademark be registered?

The rights to a trademark registration can as a rule only be enforced against infringing third parties if the mark has been effectively used in the countries where it is registered, and such use can be proved. Therefore, it is not recommended to obtain trademark registrations for countries in which use of the mark will never take place, or where effective use is planned in only three to five years time. After the expiry of the grace period, within which use of the mark is not compulsory, lack of effective use leads to the trademark registration concerned being vulnerable to cancellation.

As soon as the applicant has determined in which countries his mark is used, or will be used, territorial trademark protection coverage must be planned and applied for by optimal combination of the various trademark application systems. For example, trademarks can be registered in individual countries. In addition, various countries have joined the Madrid Agreement and/or the Madrid Protocol creating an international registration procedure, under which trademarks can be filed with a single international trademark authority. In the EU, community trademarks can be filed.

The best procedure in a given situation must be assessed on a case-by-case basis because it depends on a plurality of issues that should be discussed with a trademark expert.

Does my trademark collide with a prior trademark?

If you wish to use or protect a trademark, it is advisable to carry out a search to disclose any prior identical or confusingly similar trademark registrations. A trademark search is the only effective tool for analysing the risks of possible oppositions, official actions or infringement actions before filing a trademark application.

What are the costs for registering a trademark?

The costs for a trademark application, up to its registration, vary significantly from country to country. On average they may amount to between CHF 1000 and 15'000. In estimating the costs it must also be taken into account that certain jurisdictions still apply the single class system, which allows the claiming of only one class of goods or services per trademark application.

On specific equest, we can provide a more detailed cost estimate for any given case.