Expected changes in trademark practice

The Swiss Federal Institute of Intellectual Property (IPI) proposes to soften its practice regarding the geographical restriction of the list of goods and services for trademarks with an indication of origin.

The current practice of the IPI, which makes the registration of trademarks with an indication of origin dependent on the geographical limitation of the goods and – if the requirements of Art. 49 Trade Mark Protection Act (TmPA) are not met – services, is expected to be withdrawn in the first half of 2022. Under the new practice, an indication of origin shall not be considered misleading at the time of trademark registration as long as its correct use is possible. In these cases, the IPI will no longer require a restrictive wording in the products and services descriptions. The restriction currently applied will be retained only in specific cases of a geographical indication (e.g. PDO, PGI or AOP, including for wines). This should lead to a significant simplification of the IPI's examination practice. Trademark applicants who wish to have their current applications treated under the new practice can submit a request for suspension to the IPI. In such cases, the applications will be revisited once the modified practice will be implemented.

Contributors: Sarah Drukarch (Senior Associate), Norina Messerli (Trademark Paralegal)

No legal or tax advice

This legal update provides a high-level overview and does not claim to be comprehensive. It does not represent legal or tax advice. If you have any questions relating to this legal update or would like to have advice concerning your particular circumstances, please get in touch with your contact at Pestalozzi Attorneys at Law Ltd. or one of the contact persons mentioned in this legal update.

© 2021 Pestalozzi Attorneys at Law Ltd. All rights reserved.