Grounds for Refusal in Trademark Law (Switzerland)

Trademarks have become indispensable in everyday business: they are signs used to distinguish the goods or services of one company from those of others (Art. 1 para. 1 TmPA). Trademarks thus serve both a function of indicating origin and distinguishing products. However, anyone seeking to register a trademark will not obtain protection in every case. The law provides for so-called grounds for refusal, which prevent certain signs from being protected as trademarks at all. A distinction is made between absolute and relative grounds for refusal.

Absolute Grounds for Refusal

Absolute grounds for refusal concern general interests and are examined ex officio during the registration procedure. They are exhaustively regulated in Art. 2 TmPA. Trademark protection is excluded in the following cases:

• Signs in the public domain: Signs are considered to be in the “public domain” if they must remain available for general use or lack the required distinctiveness. Purely descriptive terms, such as “apple” for an apple, are not protectable. Simple signs or colors are also not protectable. However, a sign that was originally not protectable may acquire protection if it has become established in the marketplace.

• Unprotectable shapes of goods or packaging: Shapes that constitute the nature of the goods themselves, as well as shapes of goods or packaging that are technically necessary, are excluded from protection. Here too, the underlying rationale is that such elements must remain available to all market participants.

• Misleading signs: Misleading signs are prohibited.A trademark must not create false impressions among the public regarding, for example, the origin, quality, or other characteristics of a product.

• Signs contrary to law, morality, or public order: Finally, a sign must not be unlawful, immoral, or contrary to public policy.

Relative Grounds for Refusal

Relative grounds for refusal protect the rights of existing trademark owners and are not examined ex officio, but must be invoked by them. They take into account registered trademarks as well as trademarks that are well known in Switzerland. According to Art. 3 para. 1 TmPA, trademark protection is excluded if the following conditions are met:

• Similarity of signs: The new sign is identical with, or similar to, an earlier trademark. Similarity is assessed based on the overall impression.

• Similarity of goods or services: The sign is used for goods or services that are identical or similar to those covered by the earlier trademark. Well-known trademarks may also be protected beyond similar goods or services.

• Likelihood of confusion: If similarity of signs and similarity of goods or services are established, it must finally be assessed whether this results in a likelihood of confusion. It is not necessary to prove an actual case of confusion; it is sufficient if the younger sign conveys to the public the message “a substitute for” or “as good as.”

Conclusion

When choosing a trademark, grounds for refusal should always be kept in mind. Careful preparation is key, in particular a prior search for earlier trademarks. Those who proceed diligently can avoid legal conflicts in the market. In unclear or more complex cases, it may be advisable to seek legal advice at an early stage.