Switzerland: Design Laws And Regulations 2022

1.1 What is the relevant Design authority in your jurisdiction?

The Swiss Federal Institute of Intellectual Property (IPI) is the relevant design authority in Switzerland.

1.2 What is the relevant Design legislation in your jurisdiction?

The relevant design legislation in Switzerland are as follows:

• The Federal Act on the Protection of Designs (Designs Act, DesA).
• The Federal Ordinance on the Protection of Designs (Designs Ordinance, DesO).

2.1 What can be registered as a Design?

The external appearance of products or parts thereof, characterised, in particular, by the arrangement of lines, surfaces, contours or colours or by the materials used, can be registered as a design (art. 1 DesA). Two-dimensional designs and three-dimensional forms can be registered as designs.

2.2 What cannot be registered as a Design?

It is not possible to register as a design anything that that does not meet the definition of a design mentioned under question 2.1. For example, immaterial objects such as musical creations, ideas or concepts cannot be registered as designs.

2.3 What information is needed to register a Design?

The application for registration of a design must include the following information (art. 9 § 1 DesO):

• The name and address of the applicant.
• The number of designs included in the application.
• A reference number for each design.
• At least one representation of each design filed, suitable for reproduction.
• Information about the products for which the design(s) is/are to be used.
• The name and domicile of the person(s) who created the design(s).

2.4 What is the general procedure for Design registration?

Upon filing the application, the IPI conducts a formality examination to verify whether the application complies with the applicable formal requirements.

The IPI also conducts a limited substantive examination. It verifies that the design falls within the definition of a design (see question 2.1), that it does not infringe upon federal law or international treaties, and that it is not contrary to public policy or morality. The IPI does not examine the novelty or the individual character of the design.

In case of a formal or substantive deficiency, the IPI sets the applicant a time limit to remedy the deficiency. If the deficiency is not remedied within the set time limit, the IPI dismisses the application in its entirety or in part, as the case may be.

If there are no grounds for dismissal, and if the applicant has not requested the deferment of the publication, the IPI enters the design into the Design Register and publishes the registration.

2.5 How is a Design adequately represented?

The representation(s) of the design must be suitable for reproduction (art. 19 § 1 letter b DesA; art. 10 § 1 DesO).

Photographs (black and white or colour) and drawings are accepted, as well as not-animated 3D renderings. The resolution must ideally be 300dpi. The background must be neutral and the depicted object must be in sufficient contrast to it. Additional descriptions (texts, measurements) are not allowed.

2.6 Are Designs registered for specific goods or products?

Yes. The application must include information about the products for which the design is to be used (art. 9 § 1 letter f DesO).

2.7 Is there a “grace period” in your jurisdiction, and if so, how long is it?

Yes, there is a grace period for novelty (art. 3 DesA). The disclosure of a design during the 12 months preceding the filing date or the priority date may not be invoked against the right holder if:

• a third party disclosed the design in an abusive manner to the detriment of the entitled person; or
• the entitled person has disclosed the design.

2.8 What territories (including dependents, colonies, etc.) are or can be covered by a Design in your jurisdiction?

A Swiss design covers the territory of Switzerland only.

2.9 Who can own a Design in your jurisdiction?

Any physical person or legal entity may own a design in Switzerland.

2.10 How long on average does registration take?

The registration process takes a few months.

2.11 What is the average cost of obtaining a Design in your jurisdiction?

The basic fee charged by the IPI is CHF 200 for one design. A fee of CHF 100 is charged for each additional design included in the same application. For six designs or more in the same application, the total basic fee is CHF 700. Publication of one representation is included in the basic fee. For each additional representation, an additional fee of CHF 20 is charged.

2.12 Is there more than one route to obtaining a registration in your jurisdiction?

Yes. It is possible to file an application for an international design through the World Intellectual Property Organization (WIPO), based on the Hague Agreement concerning the International Deposit of Industrial Designs.

2.13 Is a Power of Attorney needed?

No power of attorney is required.

2.14 If so, does a Power of Attorney require notarisation and/or legalisation?

This is not applicable.

2.15 How is priority claimed?

The declaration of priority must be included in the application for registration of the design (art. 9 § 2 letter b DesO). The right of priority lapses when the declaration is not made at the time of filing (art. 12 letter a DesO).

The declaration of priority must include the date of the first filing, the country in which the first filing was made, and the countries for which the first filing was made (in the case of an international application, for instance) (art. 11 § 1 ODes).

Submission of a priority document is not mandatory, but the IPI may require it (art. 23 § 1 DesA).

2.16 Can you defer publication of Design applications in your jurisdiction? If so, for how long?

Yes. The applicant may request that publication be deferred for up to a maximum of 30 months from the filing or priority date (art. 26 § 1 DesA).

3.1 What are the grounds for refusal of registration?

Formal deficiencies, if not remedied within the time limit set by the IPI, may lead to the dismissal of the application (art. 15 § 1 DesO). Formal deficiencies may consist in missing information on the applicant or the person who created the design, or concern the representations, for example.

The IPI conducts only a limited substantive examination (see question 2.4). It verifies that the design falls within the definition of a design, that it does not infringe upon federal law or international treaties, and that it is not contrary to public policy or morality (art. 16 § 1 DesO). The IPI does not examine the novelty or individual character of the design.

3.2 What are the ways to overcome a grounds objection?

The applicant may submit arguments in response to the notification of a deficiency, within the set time limit.

3.3 What is the right of appeal from a decision of refusal of registration from the Intellectual Property Office?

The applicant may file an appeal within 30 days from receipt of the IPI's decision with the Federal Administrative Tribunal. The decision of the Federal Administrative Tribunal may in turn be appealed within 30 days from receipt by the applicant with the Swiss Federal Tribunal (the Swiss highest court).

3.4 What is the route of appeal?

See question 3.3.

4.1 Can a Design application be opposed, if so, on what grounds?

No. The Designs Act does not provide for an opposition procedure.

4.2 Who can oppose the registration of a Design in your jurisdiction?

This is not applicable.

4.3 What is the procedure for opposition?

This is not applicable.

5.1 What happens when a Design is granted registration?

The IPI enters the design in the Design Register and publishes the registration.

Entry of the design to the Design Register creates the right to the design (see question 5.2).

5.2 From which date following application do an applicant's Design rights commence?

The design rights arise on the date of registration, i.e. the date of entry of the design into the Design Register (art. 5 § 1 DesA). Once the design is registered, the protection period commences from the date of filing of the application (art. 5 § 2 DesA).

5.3 What is the term of a registered Design right?

The initial term is five years from the filing date (art. 5 § 2 DesA). The initial term may be extended for four periods of five years each (art. 5 § 3 DesA). The maximum duration of the protection is 25 years from the filing date.

5.4 How is a Design renewed?

The renewal application must be submitted to the IPI within the last 12 months preceding the expiry of the term of protection, but no later than six months after its expiry (art. 21 § 1 DesO). The renewal fee must be paid within the same time limits (art. 21 § 3 DesO).

6.1 Can an individual register the assignment of a Design?

Yes. The request for registration of an assignment must be made by the former right holder or by the person who is acquiring the design (art. 27 § 1 DesO).

6.2 Are there different types of assignment?

The right holder may transfer its rights in whole or in part (art. 14 DesA). The right holder may assign one or several designs when the registration covers multiple designs. On the other hand, it is not possible to assign certain rights only, or rights to certain elements of a design.

6.3 Can an individual register the licensing of a Design?

Yes. The request for the registration of a licence must be made by the right holder or by the licensee (art. 15 § 2 DesA; art. 28 § 1 DesO).

6.4 Are there different types of licence?

The licence may be exclusive, sole (the right holder retaining the right to use the design) or simple (non-exclusive). It can also be partial, in the sense that it may concern only one or some designs in a registration covering multiple designs. It may be limited in scope to certain rights (right of manufacture, for example). Geographical restrictions are admissible.

It is also possible to register a sub-licence, subject to proof that the licensee is authorised to grant sub-licences.

6.5 Are there any laws which limit the terms upon which parties may agree a licence?

There are no specific legal provisions limiting the terms of licence agreements.

Licence agreements are subject to the general legal provisions applicable to contracts. A licence agreement may not include terms that are impossible, unlawful or immoral, or limit the freedom of one party to a degree that violates public morals.

Restrictions may also derive from the Federal Act on Cartels on other Restraints to Competition.

6.6 Can Designs be the subject of a compulsory licence (or licences of right), and if so, in what circumstances does this arise and how are the terms settled?

The right holder must suffer a licence in two situations:

• If a person claiming a better right to a design successfully brings an action for assignment of the design against the registered right holder, licences granted by the latter to third parties in the intervening period lapse. However, if such third parties have used the design commercially in Switzerland in good faith or have made special preparations to do so, they are entitled to a non-exclusive licence (art. 34 § 3 DesA).
• If a person has used a design commercially in good faith in Switzerland (or made special preparations for that purpose) between the last day of the time limit for payment of the renewal fee and the day on which a request for further processing is filed, such person – if he or she wants to continue using the design – must pay the right holder an appropriate compensation from the date on which the design right is revived (art. 13 DesA).

6.7 Can a Design licensee sue for infringement?

Any person who holds an exclusive licence is entitled to bring a separate action irrespective of the registration of the licence in the Register unless the licence agreement expressly excludes it. Any licensee (including a non-exclusive licensee) may join an infringement action in order to claim their own damages (art. 35 § 4 DesA).

6.8 Are quality control clauses necessary in a licence?

No. The licence agreement is valid without control clauses.

6.9 Can an individual register a security interest under a Design?

Yes. The right holder may request the registration of a pledge on the design (art. 16 § 1 DesA).

6.10 Are there different types of security interest?

It is possible to register a pledge on a design, as a guarantee of the payment of a debt.

It is also possible to register a usufruct (art. 16 § 1 DesA). The usufruct confers complete enjoyment of its object to the beneficiary.

7.1 What are the grounds for invalidity of a Design?

The grounds for invalidity are the following (art. 4 DesA):

1. the design does not fall under the definition of a design;
2. the design was not novel or was devoid of individual character at the time of filing;
3. the features of the design are dictated solely by the technical function of the product;
4. the design infringes federal law or international treaties; and
5. the design is contrary to public policy or morality.

A design does not meet the novelty requirement if an identical design which could be known to the circles specialised in the relevant sector in Switzerland has been made available to the public prior to the filing date or the priority date (art. 2 § 2 DesA).

A design does not have individual character if the overall impression it produces differs only in immaterial features from a design that could be known to the circles specialised in the relevant sector in Switzerland (art. 2 § 3 DesA). 

7.2 What is the procedure for invalidation of a Design?

The action seeking to invalidate a design must be brought before the competent civil tribunal, according to the rules of civil procedure and international private law in case of an international context. No administrative procedure is available.

7.3 Who can commence invalidation proceedings?

Any person who can demonstrate a legal interest may apply to the tribunal for a declaratory judgment as to whether a right or legal relationship governed by the Designs Act does or does not exist (art. 33 DesA). This includes the validity or invalidity of a design. Any person who wishes to use a design that is identical or similar to a registered design would have a legal interest to an invalidation action.

7.4 What grounds of defence can be raised to an invalidation action?

The defendant may submit arguments to show that the invalidation ground(s) invoked by the claimant do not exist (see question 7.1).

7.5 What is the route of appeal from a decision of invalidity?

In each Swiss canton, one tribunal only is competent for intellectual property matters, including actions based on the Designs Act. There is only one appeal route, namely an appeal against the decision of the cantonal tribunal filed with the Swiss Federal Tribunal.

8.1 How and before what tribunals can a Design be enforced against an infringer?

In case of infringement of a design registered in Switzerland, the right holder needs to file a complaint or a request for an interim injunction before the competent civil tribunal.

If both parties are based in Switzerland, the claimant may choose between the tribunal of its domicile, the tribunal of the defendant's domicile, or the tribunal of the place of the infringing act or of its result (for example, the place where the products embodying the design were sold).

If the defendant does not have its domicile or residence in Switzerland, only the tribunal of the place of the infringing act or of its result may have jurisdiction.

8.2 Are the issues of validity and infringement heard in the same proceedings or are they bifurcated?

Issues of validity and infringement are generally heard in the same proceedings. The tribunal examines first the issue of a validity, and if satisfied that the design is valid, it goes on to the issue of infringement.

8.3 What are the key pre-trial procedural stages and how long does it generally take for proceedings to reach trial from commencement?

The first stage concerns the exchange of written submissions. There are usually four submissions, namely: complaint; response; reply; and rejoinder.

The second stage concerns the taking of evidence: upon the parties' requests, the Tribunal may conduct hearing of parties' representatives and/or witnesses, or obtain an expert opinion.

The third stage is the trial itself, namely the (usually oral) closing submissions before the Tribunal.

The Tribunal issues its decision after the closing submissions.

It takes about 18 months to reach trial from the filing of the complaint.

8.4 Are (i) preliminary, and (ii) final injunctions available and if so on what basis in each case?

Yes, both preliminary and final injunctions are available.

To obtain a preliminary injunction, the right holder must render plausible that:

• a right to which he or she is entitled has been violated or a violation is anticipated; and
• the violation threatens to cause not easily reparable harm.

The condition of “not easily reparable harm” implies that the applicant will not be able to repair the harm caused by the infringement it he/she has to wait for a decision on the merits, for example, because the infringement causes a market disruption.

In order to obtain a final injunction (art. 35 § 1 DesA), the right holder must show that:

• a right to which he or she is entitled has been violated or a violation is anticipated; and
• he/she has a sufficient interest in the requested injunction.

With respect to an ongoing infringement, the requirement of the sufficient interest is always satisfied (except when the right holder has tolerated the infringement for a long time). If the infringement has ceased, such interest may exist if the infringement has taken place repeatedly, or when the defendant refuses to admit to the illicit character of its behaviour.

8.5 Can a party be compelled to provide disclosure of relevant documents or materials to its adversary and if so how?

Yes, to a certain extent. The right holder may require the defendant to provide information on the origin and quantity of unlawfully manufactured items in his possession, to name the recipients and to disclose the extent of any distribution to commercial customers (art 35 § 1 letter c DesA). Refusal to provide such information may expose the defendant to criminal sanctions (art. 41 § 1 letter c DesA).

On the other hand, there is no general discovery procedure in Switzerland.

8.6 Are submissions or evidence presented in writing or orally and is there any potential for cross-examination of witnesses?

Submissions are presented in writing (with the exception of closing submissions).

Witness evidence is presented orally, through in-person questioning. Cross-examination is possible. 

Expert opinions requested by the tribunal are submitted in writing but the expert may also be heard in person, with cross-examination possible.

8.7 Can infringement proceedings be stayed pending resolution of validity in another court or the Intellectual Property Office?

Yes. Infringement proceedings may be suspended in particular if the decision depends on the outcome of other proceedings.

8.8 Is there any alternative shorter, flexible or streamlined procedure available? If so, what are the criteria for eligibility and what is the impact on procedure and overall timing to trial?

No, there is no alternative procedure available.

8.9 Who is permitted to represent parties to a Design dispute in court?

Only attorneys-at-law may represent parties in a design dispute before the civil courts.

8.10 After what period is a claim for Design infringement time-barred?

Claims may be made as long as the infringing acts continue. However, according to case law, when the holder of intellectual property rights has tolerated an infringement for a long period of time (four to eight years), he/she may no longer rely on his/her rights against the infringer if he/she knew or should have known of the infringement by exercising diligent care.

Once the infringing acts have ceased, claims for damages become time-barred after three years from the date on which the injured party became aware of the loss and of the identity of the liable person, and in any case after 10 years from the date on which the infringing act took place or ceased.

8.11 Are there criminal liabilities for Design infringement?

Yes, in the case of wilful infringement (art. 41 § 1 DesA). If the offender acts “by trade”, the penalties are more severe (art. 41 § 2 DesA). An infringer is acting “by trade” when, by reason of the time and means devoted to his or her criminal activity, the frequency of the acts during a given period and the income obtained or expected, it is apparent that he or she is carrying out the criminal activity in the manner of a profession.

8.12 If so, who can pursue a criminal prosecution?

The right holder may file a criminal complaint against the infringer. If the infringer is acting “by trade” (see question 8.11), he/she may be prosecuted ex officio.

8.13 What, if any, are the provisions for unauthorised threats of Design infringement?

There are no specific provisions on unauthorised threats of design infringement.

The provisions of the Swiss Criminal Code addressing the offences of “threatening behaviour” and “coercion” may come into play in the case of unjustified or disproportionate threats based on alleged design infringement.

9.1 What grounds of defence can be raised by way of non-infringement to a claim of Design infringement? For example are there “must match” and/or “must fit” defences or equivalent available in the jurisdiction?

The defendant may raise the following grounds of defence by way of non-infringement (assuming validity of the claimant's design):

• The disputed design of the defendant does not have the same essential features as the protected design and consequently does not produce the same overall impression as the claimant's (art. 8 DesA).
• The features that the disputed design and the protected design have in common are dictated solely by the technical functions of the product (art. 4 letter c DesA). There is no express “must-fit” provision in the Designs Act excluding protection of connecting features (i.e. features of a design whose form and dimension must be reproduced to permit connection or assembly with another product). However, it is admitted that the general exclusion of art. 4 letter d DesA leads to the same result.

9.2 What grounds of defence can be raised in addition to non-infringement?

The defendant may raise the following additional grounds of defence:

• The claimant's design is not valid (because of lack of novelty or individual character).
• The defendant did not use the design commercially but for private purposes.
• The defendant used the design in Switzerland in good faith before the filing date or priority date of the design, or during the period of deferment of the publication (art. 12 DesA).
• The defendant used the design commercially in good faith in Switzerland (or made special preparations for that purpose) between the last day of the time limit for payment of the renewal fee, and the day on which a request for further processing is filed (art. 13 DesA). In such case, the defendant must pay appropriate compensation to the right holder from the date on which the design is revived.
• Prolonged inaction of the right holder, when the right holder knew or should have known about the infringement by exercising reasonable care (see question 8.10).

9.3 How does your jurisdiction deal with Design protection for spare parts?

It is possible to file a design application for a spare part, provided the spare part meets the requirement of novelty and individual character.

The features of a spare part that are dictated solely by the technical function of the product (for instance features that are necessary to connect the spare part with another product) shall not be protected (see question 9.1).

10.1 What remedies are available for Design infringement?

The available remedies are:

• Injunction to cease and desist from the infringement and/or to refrain from infringing the design in the future (art. 35 § 1 letter a and b DesA).
• Provision of information on the origin and quantity of unlawfully manufactured items, on the name of the recipients and on the extent of distribution to commercial customers (art. 35 § 1 letter c DesA).
• Payment of damages or handing over of profits made by the infringer (art. 35 § 2 DesA).
• Forfeiture of the unlawfully manufactured products or of equipment that primarily serve their manufacture (art. 36 DesA).
• Publication of the judgment (art. 37 DesA).

10.2 Are damages or an account of profits assessed with the issues of infringement/validity or separately?

Damages or an account of profits are usually assessed within the same procedure as infringement/validity, but as a second step, as the Tribunal will first assess the issues of validity and infringement.

10.3 On what basis are damages or an account of profits assessed?

Damages are assessed on the basis of the actual damage (for example, lost sales) suffered by the right holder. The right holder bears the burden of proof of the damages.

The right holder may claim the net profits of the infringer (i.e. the profits remaining after deduction of the concrete costs incurred by the infringer to generate the profits). The burden of proof lies with the right holder with respect to the profits, and with the infringer with respect to the deductible costs.

10.4 Are punitive damages available?

No, punitive damages are not available in Switzerland.

10.5 Are costs recoverable from the losing party and, if so, how are they determined and what proportion of the costs can usually be recovered?

Yes. The Tribunal will determine the portion of costs and attorney's fees to be borne by the losing party, taking into account the value in dispute, the complexity of the matter, the results obtained by the claimant (full or only partial admission of his/her claims) and to a lesser extent the procedural behaviour of the parties.

11.1 What is the right of appeal from a first instance judgment and is it only on a point of law?

The only appeal is with the Swiss Federal Tribunal (the Swiss highest court). The Swiss Federal Tribunal only reviews points of law, save for exceptional circumstances.

11.2 In what circumstances can new evidence be added at the appeal stage?

The parties may not adduce new evidence in an appeal with the Swiss Federal Tribunal.

12.1 Is there a mechanism for seizing or preventing the importation of infringing articles and, if so, how quickly are such measures resolved?

Yes. The right holder may file an application for assistance of the Customs Administration. The application must include the details of the registered designs and all available information on the infringing products likely to be imported or exported. If the Customs Administration suspects that infringing goods are about to be brought into or taken out of Switzerland, it will notify the right holder, and withhold the goods for 10 working days (with one extension possible), in order to allow the right holder to obtain a preliminary seizing order from the competent court.

A simplified procedure may apply when the importer/owner of the infringing products consents to the destruction of the products withheld by the Customs Administration.

13.1 To what extent are unregistered Design rights enforceable in your jurisdiction?

Swiss law does not provide for protection of unregistered designs as such.

Unfair competition law may offer protection against use of an unregistered design, for instance if the first unregistered design enjoys a certain market recognition and if the use by a third party creates a risk of confusion or exploits the reputation of the first design in a parasitic manner.

13.2 What is the term of unregistered Design rights enforceable in your jurisdiction?

This is not applicable.

13.3 What, if any, are the key differences between unregistered and registered Design rights in your jurisdiction?

This is not applicable.

13.4 If unregistered Design protection is available in your jurisdiction, is protection cumulative or mutually exclusive?

This is not applicable.

13.5 Is copyright available to protect industrial Designs?

Yes. Concurrent protection under the Designs Act and under the Copyright Act is possible. The Swiss Copyright Act mentions “works of applied art” among the categories of works that may be protected.

According to court decisions, a higher degree of individual character is required in practice under copyright law.

14.1 What have been the significant developments in relation to Designs in the last year?

There have been no significant developments in the last year.

14.2 Please list three important judgments in the Designs sphere that have been issued within the last 18 months.

There have been no decisions of the Federal Administrative Tribunal or of the Federal Tribunal rendered in application of the Designs Act within the last 18 months.

A cantonal decision of 24 September 2020 is of interest (Supreme Court of the Canton of Bern, HG 18 127). The claimant, a company operating an architects' office, had entered into a contract named “freelance agreement” with the defendant's company, of which the defendant was the sole director and shareholder, for services of project leader/manager for the claimant's construction projects. In this context, the defendant designed a mirrored cabinet, and filed, in her own name, an international application designating Switzerland and the EU for this design. The claimant brought an assignment action against the defendant based on art. 34 § 1 DesA. To decide who had the better right to the design, the Court examined in particular whether there was an employment relationship between the defendant and her company, and if so, whether the design fulfilled the legal conditions for belonging automatically to the employer. The Court also analysed whether the claimant could avail itself of an assignment of the design based on the terms of the freelance agreement. The Court reached the conclusion that none of the contemplated grounds was apt to justify a better right of the claimant, either for the Swiss part of the application or for its EU part, with the consequence that the Court dismissed the claim.

It is also worth mentioning the decision of the Federal Tribunal of 7 September 2021 (4A_61/2021) concerning an issue of trademark law, as it is of interest for designs law. In this case, the validity of a tri-dimensional trademark registration corresponding to the shape of the Nespresso coffee capsule was at stake. The Swiss Trademark Act excludes from protection shapes of goods or packaging that are “technically necessary”. This ground of refusal is similar to the one provided in art. 4 letter c DesA, which excludes from protection “features of the design dictated solely by the technical function of the product”. The Federal Tribunal examined whether the notion of “technical necessity” of the Trademark Act should take into account the compatibility of the product's shape with a certain system, and reached the conclusion that such was the case, with the consequence that the assessment of the existence of possible alternative shapes was to be limited to shapes compatible with such system. Despite the absence of a must-fit provision in the Swiss Designs Act (see question 9.1), this decision confirms that the technical function of a product (be it the subject of a trademark or of a design registration) may include its compatibility with a third-party system.

14.3 Are there any significant developments expected in the next year?

No significant developments are foreseen.

14.4 Are there any general practice or enforcement trends that have become apparent in your jurisdiction over the last year or so?

Swiss courts rarely accept the existence of a design infringement. In most cases, the court either denied the validity of the design due to lack of novelty or individual character (for instance because the design was too close to earlier products of the right holder), or reached the conclusion that the allegedly infringing product did not produce the same overall impression as the protected design.