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Based on the so-called Paris Convention for the Protection of Intellectual Property (PCPIP), the protection of a Design in one country, for example, in Switzerland, may for a maximum period of six months following the date of the first filing, be extended to other member states with reference to the first filing date, without the original first filing date (so-called priority) being lost (Art. 4 PCPIP). This may be done, on the one hand, by direct national filing in the respective foreign country. On the other hand, based on the Hague Convention regarding international registration of commercial designs and prototypes (“the Hague Convention”), a single application for Design protection covering up to more than 60 territories can be filed with the World Intellectual Property Organisation (WIPO/OMPI). Such international filing procedure allows the Design holders to attain the respective national protection in the named country. Thus, under the Hague Convention, a Swiss Design application may be extended to the desired member states of said Convention. Finally, an application filed with the Office for Harmonisation in the Internal Market (Trademarks and Community Designs) will lead to protection in all the member states of the European Union.

Please direct any requests or questions regarding design law, design infringements or design law litigation to one of the following attorneys:

The process of securing and implementing the Design will be in the hands of the holders. The renewal of an already registered Design and thereby the control and tracking of national and international deadlines will be left to the holders of the rights. In a registration process, the Institute for Intellection Property is not authorised to check independently whether an infringing Design is being registered. For optimum protection and monitoring of your Design, professional support is therefore recommended.

The team of Rentsch Partner will be pleased to be of assistance to you.

Strategy

If the configuration of a product is to be protected as a Design, the question arises about the extent of coverage and the territory where this is to apply. The following aspects need to be taken into consideration:

1. Any protective rights covering the Design that might already be in existence in the respective section of products.
2. The market and competition situation in the respective section of products concerning commercial and territorial aspects.
3. Determination of the Design aspects to be protected.
4. Financial means available.
5. Manner of commercial use of the Design (own use, sale of the awarded Design or granting of licences).

All these points and others ought to be discussed in detail, preferably with an attorney at law or a patent attorney.

Application and filing

A Design shall be considered as filed when an application for registration is filed with the Swiss Institute for Intellectual Property. The request must include an application for registration together with an illustration suitable for reproduction. Illustrations should be prepared with great care and an expert should be involved, since illustrations determine the scope of protection. The applicant is also offered the possibility, against payment of a fee, to describe the article in no more than 100 words. Several Designs belonging to the same class according to the international Design classification (so-called Locarno Classification) may be combined for filing as cost-effective collective lodgement. In any case, the fee for the first protection term has to be paid within the time span laid down by the Swiss Institute for Intellectual Property (Art. 19 and 20 of the Design Act).

Filing a Design establishes the assumption of novelty and uniqueness and provides the justification for its lodgement (Art. 21 of the Design Act). A third party may however at any time disprove said assumption by way of litigation.

Examination procedure

If the Swiss Institute for Intellectual Properties is handling the application for filing, it will examine whether a Design is, on the one hand, meeting the definition of Art. 1 of the Design Act (see Concept of a Design) and, on the other hand, whether the Design violates any Federal law or international treaties, whether it contravenes public order or offends any morals (Art. 21 of the Design Act). In the context of the registration procedure before the Institute for Intellectual Property, the question of whether the Design is meeting the protection requirements of novelty and uniqueness or whether its features are of a purely technical nature is not examined.

Priority

Like the laws governing trademarks, the Design laws follow the principle of filing priority. This means that whoever files the first application will have a better right to the Design (Art. 6 of the Design Act). Attention must be paid in this context to Art. 4 of the Paris Convention for the Protection of Intellectual Property (PVÜ/PCPIP) which in the case of existence of an identical Design lodgement in another member state of the PCPIP, allows the first date of filing to be claimed in another member state within 6 months after the first filing (see also International Protection).

Anyone wishing to lodge a priority claim supported by Art. 4 PCPIP must observe the relevant formalities of Swiss law.

Grant of Design protection and publication

A Design filed in accordance with statutory provisions will be entered in the Design Register and published (see www.swissreg.ch). This will convey full protective rights to the holders. In harmony with European law, the Design Act offers the possibility in the registration procedure to apply for a postponement of publication by 30 months maximum (Art. 26 para. 1 Design Act). In such a case, the Institute will keep the deposited Design secret until expiry of the postponement term or until the applicant has requested an immediate publication (Art. 26 para. 3 Design Act).

The declared objective of the current Swisness legislation procedure is to retain and safeguard the value of the “Brand Switzerland”. In order to meet this objective, both the Trademark Protection Act and the Coat of Arms Act were revised. The latter protects the Swiss coat of arms and other public insignia.

The revised Coat of Arms Act passed by Parliament on 21 June 2013 specifies inter alia that a symbol whose use is inadmissible according to the provisions of the Coat of Arms Act may not be registered as a Design or as a part thereof. It will enter into force on 1 January 2017.

The insignia that may not be used by private parties under any circumstances and may therefore not be entered in the Design Register as a Design or as a part thereof, include in particular the Swiss coat of arms (Swiss Cross in a triangular shield), the coat of arms of cantons, districts, boroughs and parishes and any symbols that could be confused therewith. Such a ban further includes word logos relating to the Swiss coat of arms, the coat of arms of a canton, district, borough, or parish (e.g. the Swiss Cross or the “Bear of Bern”).

Other symbols, by contrast, that may be used by private parties, unless such use would be misleading, would contravene public order, offend public morals or violate existing laws, include the Swiss flag (Swiss Cross in a square field) and other emblems of the Swiss Confederation (e.g. hallmarks) of cantons, districts boroughs and parishes and any symbols that may be confused therewith, as well as logos of national words or pictures (e.g. “Helvetia”, “Tell” or “Rütli”).

If said coats of arms, flags and other emblems or any word and picture logos are moreover employed by the respective trade circles to indicate geographic origin of products or services, they will be regarded as indications of origin in the meaning of the Trademark Protection Act, and the relevant provisions (Art. 47–50 Trademark Protection Act – MSchG or TPA) are applicable. The revised provisions of the TPA relating to details of origin, likewise passed by Parliament on 21 June 2013, contain initial guidelines about the method of defining the origin of natural products, victuals and industrial products. In other words, what should be the future requirements to allow a respective product to be promoted as being Swiss (see also Swiss Made and Swissness). The revised TPA and the respective regulations will enter into force on 1 January 2017. Many questions will only be clarified through application of the law.

Concept of a Design

Art. 1 of the Swiss Design Act defines Design as a creation of products or parts thereof, which are specially characterised by the arrangement of lines, surfaces, contours or colour, or by the material used. The Design Act thereby provides protection for all externally perceptible features of a product’s appearance without focussing on its intended purpose. The Design protection does not cover production methods, practical use, or technical functions; these could if required be protected by a patent.

Requirements for protection

Art. 2 of the Design Act defines the requirements that have to be met if protection is to be granted. A Design must be new and unique, i.e. it has to be sufficiently distinguishable in its essential features and according to its overall impression from existing creations known to Swiss commercial circles.

The court of appeal of the canton of Basel-City decided in a procedure for provisional measures for the protection of a shower hinge at the beginning of 2014 that also a design, which is at first sight trivial, may be unique as long as it differs according to its overall impression in essential features from existing design. This decision is in so far important as Swiss design is typically defined by its visual simplicity. In addition, it is uncontested that when judging the uniqueness of a design one has to consider the de facto liberty one has to design a special product. This liberty is smaller in the case of a shower joint than for example in the case of a table lamp.Designs are not new when, prior to the filing date or priority date, the public was given access to an identical Design.

Any Designs that are solely characterised by the technical function of the product are, however, excluded from such protection (Art. 4 letter c. of the Design Act). This reason for exclusion aims to safeguarding that competitors are not prevented from using a design where no alternative shape exists to obtain the same technical effect.

However, the Swiss Institute for Intellectual Property (IGE) does not investigate whether a Design is new and unique during the registration process (Art. 24 para. 3 of the Design Act). Nevertheless, the fact that the Design is filed in Switzerland triggers the assumption of novelty and uniqueness. Said assumption may however be disproved at any time, e.g. in infringement proceedings by the purportedly injured party.

Acceptable disclosure

The protection requirement of novelty of a Design prior to filing has one important exception in Swiss Design law: For a period of up to twelve months prior to the filing date or priority date, the disclosure of a Design cannot be held against the person holding the right to the Design if third parties have improperly disclosed the Design to the disadvantage of the person entitled thereto, or if the entitled person has disclosed it him/herself (Art. 3 of the Design Act).

Filing and registration

The right to a Design evolves in two stages. With the creation of a Design, there is initially the intangible property and the prospective entitlement to a Design. This means that the person who created the Design or who acquired the right to the Design from the original holder is entitled to file the Design at the Swiss Institute for Intellectual Property in Bern. By filing and registering it in the Design Register, the entitled person will get the benefit of an exclusive right to the Design (Art. 5 para. 1 and Art. 7 para. 1 of the Design Act).

If the respective applicants have no office or residence in Switzerland, for filing a Design, they must nominate a representative residing there or provide a delivery domicile in Switzerland. Based on the Design application in Switzerland, there will then be a period of six months following the first filing, during which the protection can be extended to other countries claiming the first-filing date (the so-called priority) (see also International Protection).

Scope of protection and duration

The Design laws protect a Design in its overall impression conveyed by the essential features. It will bestow on the title holder the right during the protection term to forbid others to use for commercial purposes an identical Design or one that has the same essential features and thereby creates the same overall impression. Usage is defined as encompassing in particular the production, storage, offering for sale, marketing, import, export and transit as well as the possession for such purposes. Since July 2008, the rights holder may forbid the import, export and transit of commercially produced products in particular also if this is done for private purposes (Art. 8 and 9 of the Design Act).

The protection will exist for a term of 5 years from the date of filing. Thereafter the protection may be renewed by four further protective terms of 5 years each up to a maximum duration of 25 years (Art. 5 of the Design Act).

The Swiss law is protecting two- or three-dimensional creations of products or parts thereof as Designs. They are specially characterised by the arrangement of lines, surfaces, contours or colours, or by the material used (Art. 1 of the Design Act).

For the Design Act to protect the Designs it requires that the creations are new and display some uniqueness (Art. 2 of the Design Act). If that is the case, then the proprietor will, following registration, have the exclusive right to use, license and market the Design.

The explanations on this website contain basic information about Swiss and international Design rights. This will provide you with a first insight into the system of Design protection, it will inform you about the statutory basis in Switzerland and, inter alia, enable you to get an idea of the registration procedure and the scope of protection available for of a Design in Switzerland.

In respect of any legal and strategic questions, for example in connection with the application and filing of a Design, its licensing or the procedure in the event of an infringement of a protected Design as well as any associated services, such as searches in respect of novelty, or the management of the Design portfolio, the Attorneys-at-Law and Patent Attorneys of Rentsch Partner AG would be pleased to be of assistance.