The most important tips for protecting a brand
As the continuous development and maintenance of the brand is costly and time-consuming, the brand represents a significant asset of your company. The early legal protection can protect it from imitators and free riders. digitalCounsels helps you protect your brand at an attractive price in Switzerland.
1. Why is it worthwhile to register a trademark?
Registering your trademark is a critical step in securing your ‘corporate identity’. By registering, you are registered as the legitimate owner of your trademark and are thus better protected against misuse and misleading use of your trademark by third parties.
One of the most important reasons to protect your brand is the recognition value. With a registered trademark you differentiate your company and your products from your competitors and you secure your good reputation. This creates a relationship with the customer and can have a positive influence on the decision to buy your products.
Many potential customers use social media instead of traditional search engines to find more information about their business. With a registered trademark, you will be more easily recognized and found faster. This will help you get more visits to your website, get better search rankings, and better brand recognition.
With care and development, over time, your brand creates an intangible value for your business that can indirectly add value to your business and create new growth opportunities. A strong brand value is also interesting for future investors. A brand should therefore be seen as an asset that can be sold, bought or licensed.
2. What types of brands are there?
Basically, a distinction is made between word, word / image and image marks. A tag can include all graphically representable characters, such as letters, character combinations, and numbers.
Die Wortmarke ist eine Marke, die sich ausschliesslich aus Buchstaben in Druckform zusammensetzt und keine weiteren individualisierenden Eigenschaften, wie Farbe oder andere graphische Merkmale, besitzt. Eine Bildmarke ist die ausschliesslich bildliche, oftmals farbige Darstellung einer Marke. Es sind entsprechend der Bezeichnung keine Wörter im Bild zu sehen. Wort- und Bildelemente können jedoch auch kombiniert und als Wort-/Bildmarke geschützt werden.
Die dreidimensionale Marke kann ein spezielles Objekt sein, welches besonders charakteristisch für das Produkt oder das Unternehmen ist. Beispiele hierfür findet man bei Getränkeherstellern, deren Flaschen eine besonders markante Form besitzen (Rivella, Capri-Sonne, etc.). Geschützt wird dabei das visuelle Erscheinungsbild.
3. Which brand classes should I choose?
When registering your trademark, you must provide a class of goods or services. If you choose the wrong class when registering, your brand can become vulnerable and even unusable. Changing the classes is no longer possible after registration. Furthermore, your product usually falls into more than one class, making the class system difficult for laymen to see through. Our trademark law specialists are happy to inform you which procedure is most advantageous to you and for which classes your trademark must be registered.
4. What are the costs?
The cost of a first registration of the brand in Switzerland is CHF 550.-. If protection is requested for several product classes, a surcharge of CHF 100 per class will be applied for from the fourth class onwards. Registration of your trademark only needs to be renewed every 10 years to maintain trademark protection. The extension of the brand for another 10 years costs CHF 700.-.
Attorney’s fees: Most attorneys charge a flat fee for comprehensive trademark filing and registration. At digitalCounsels you can also have your brand registered at a fixed price. The price includes:
- Examination of the protectability of the mark in Switzerland
- Identity search (brand)
- Advice on the form of input (word, picture, word / figurative mark)
- Creating the goods and services directory
- Correspondence and completion of all administrative and legal formalities
If you want to operate internationally, a foreign trademark registration is necessary. As brands are treated differently country by country, it is necessary to file an application for registration in the trademark register in each country in which you wish to offer your products. Direct registrations in the countries concerned or an international or regional registration are possible.
5. Why should I hire a trademark specialist?
Experience is the most important qualification of a trademark specialist. This includes not only the experience in cooperation with the IGE (Federal Institute of Intellectual Property) and the registration of trademarks, but also those with the enforcement and protection of trademark rights. The careful evaluation of trademark searches is also part of the practical experience that a good trademark law specialist brings along.
The quick registration of your brand is of great importance. With the support of a trademark specialist, your chances of being successful right from the first attempt increase significantly.
Trademark law covers many more areas than just registering a trademark. There are also other areas in which the trademark specialist can support you:
- Preparation process to register the brand
- Trademark search
- Preparation of a protection strategy
- Monitoring trademark rights
- Procedure for trademark infringement (counterfeiting, online legal violations)
- Trademark litigation
- Cancellation and opposition proceedings
- Regular brand renewal
- Intellectual property management
- Change of ownership
6. What does the trademark search include?
Before you register your brand, you should first clarify whether such a mark does not already exist. The problem is not only the existence of a brand, but also the existence of very similar brands. Since a change of an established brand can be associated with high profit losses, it can be quite worthwhile, from the outset, to hire a professional who does the research work. As far as the question of likelihood of confusion is concerned, it is generally determined whether, from the consumer’s point of view, there is a risk that two different brands are mistakenly assigned to the same company. This is only the case according to international guidelines when it comes to companies that manufacture products that are assigned to the same class for goods and services. Due to this, a careful assignment of the own product to the correct product class is of central importance.
7. How is the registration of the trademark?
Upon receipt of the application for registration of the trade mark and payment to the Registrar, the latter will check the legal requirements for a valid registration. If the application does not meet the requirements, the registrar will contact you to give you the opportunity to comment. It can also be subsequently made changes to the brand. With a completed registration, your trademark will be published on www.swissreg.ch.
8. For what reasons could the IPI refuse to register a trademark?
The potential likelihood of confusion with an already registered trade mark is the most common reason for refusing to register or register a trade mark. It is based on the assumption that the proposed trade mark is so similar to an already registered trade mark that consumers risk the two Could confuse products. Several aspects are taken into account to prove the likelihood of confusion. This includes the similarity of the brands, the strength of the original brand and the likelihood of possible confusion by an average consumer. Other reasons for rejection may be misleading labeling, geographical misrepresentation or purely ornamental labeling without any recognition.
9. What happens if someone uses my trademark without my permission?
The unauthorized use of your trademark is a trademark infringement. In the event that your registered trademark rights could be violated or have already been violated, you have the opportunity to initiate an opposition and a lawsuit in court. Our trademark law specialists can advise you on which legal steps to take. Furthermore, our lawyers can assert a trademark infringement or set up a complaint and send it directly on request.
10. Where can I find more information?
- For the search of companies: zefix.admin.ch
- For the search of trademarks: swissreg.ch
- Assignment to the product classes: https://www.dpma.de/docs/service/klassifikationen/nizza/nizza_11-2017_alphabetische_liste_waren.pdf
- For further information: ige.ch