With regard to intellectual property, only the federal authorities are involved in administrative procedures. Articles 7 to 43 of the Federal Law on Administrative Procedures (LPA) apply to first instance administrative procedures, i.e. before the Swiss Federal Institute of Intellectual Property. The appeals procedure involving the Federal Administrative Court is, however, governed by Articles 44 to 71 of the LPA and by the Federal Act on the Federal Administrative Court (LTAF). Where an administrative law appeal to the Federal Supreme Court is admissible, proceedings before this authority are governed by Articles 82 to 112 LTF.
It should be stressed that Swiss intellectual property law does not provide for administrative procedures on the merits and remedies for IPR infringements such as those referred to within the context of judicial proceedings. However, for reasons of transparency, a description is given of the rules which apply to administrative procedures in general. The following may be cited as types of administrative procedure to which an IPR holder may have recourse to assert his right:
Opposition procedure by the holder in respect of a registration which he considers to be in conflict with his IPR 3;
a request for intervention at the border.
9.1 Specify the administrative authorities which have jurisdiction over IPR infringement cases
Opposition procedure in the event of a conflict with a prior IPR
This procedure is provided for in the field of trademarks, geographical indications and patents.
The holder of a prior mark may lodge an objection to a new registration with the Swiss Federal Institute of Intellectual Property within three months of that registration being published (Article 31 et seq. LPM).
Appeals against decisions of the Institute may be lodged with the Federal Administrative Court (Article 44 LPA). In this context, the Court acts as an independent tribunal and applies the LPA and the LTAF. If the objector wins his case, the registration of the mark will be revoked. If not, he may lodge a complaint with the civil courts against the party registered as the holder of the mark or patent. The Federal Administrative Court's decisions in trademark opposition cases are final (Article 73 LTF).
It is also possible to oppose patent applications within nine month after the publication of the registration with the Swiss Federal Institute of Intellectual Property (Article 59c LBI). Anyone may oppose the registration based on absolute grounds for refusal (Article 1a, 1b and 2 LBI). Appeals against these decisions are dealt with in the first instance by the Federal Administrative Court (see Article 59c(3) LBI) and in the final instance by the Federal Supreme Court.
With regard to geographical indications in respect of agricultural products and processed agricultural products, anyone who can prove a legitimate interest or the Cantons may lodge an objection to the registration of a geographical indication with the Federal Agriculture Office (see Articles 10 and 11 of the Ordinance on the Protection of Appellations of Origin and Geographical Indications in respect of Agricultural Products and Processed Agricultural Products, RS 910.12). Appeals against these decisions are dealt with in the first instance by the Federal Administrative Court (Article 44 LPA) and in the final instance by the Federal Supreme Court. Possible grounds for objection may include a conflict with a well-known or reputable mark or name which is completely or partly homonymous and has been in use for a long time.
Measures at the border
The Customs Authorities are responsible for measures at the border. They may suspend the release into free circulation of a suspect consignment "ex officio" and alert the persons referred to in section 9.2.1 below or may act on request from such a person. The Customs Authorities' decision cannot be appealed. The introduction of an appeals procedure would run counter to the goal pursued by the Customs Authorities, viz. to act in as simple and rapid a manner as possible to give the applicant the time to obtain provisional measures from the civil court. An appeal could actually prevent the Customs Authorities from acting in time. It should be noted that if someone applies for a measure at the border, as a rule, provisional measures from the civil law judicial authorities should be requested within the prescribed periods (see, for instance, Article 77(2) LDA; Article 72(2) LPM).
See also the replies to questions 15 to 19.
9.2 Which persons have standing to assert IPRs? How may they be represented? Are there requirements for mandatory personal appearances before the administrative authority by the right holder?
9.2.1 Which persons have standing to assert IPRs?
Opposition procedure in the event of conflict with a prior right
With regard to trademarks, only the holder of a prior mark, which has been filed or registered, or a well known mark may oppose the subsequent registration of another mark within three months of that mark being published (Article 31 LPM). Insofar as patents are concerned, any person may, within nine months of publication of a patent registration, oppose the issuing of the patent (Article 59c LBI). With regard to an appeal to the Federal Administrative Court against decisions concerning opposition applications, anyone involved as a party to the procedure which led to the decision appealed against or anyone excluded from the procedure by the decision appealed against has standing to act.
Measures at the border
The following have standing to apply for action to be taken: the holder of a trademark, copyright or neighbouring right, the right to an industrial design or integrated circuit topography, the registered holder of a geographical indication, copyright or neighbouring rights collecting societies, licensees entitled to lodge a civil procedure or even trade or business associations which are authorized to do so with regard to geographical indications (Article 75(1) and 76(1) LDA and Article 12 LTo with a cross reference to Article 75(1) LDA; Article 71(1) LPM; Article 47 LDes; 86b LBI).
See also the replies to questions 15 to 19.
9.2.2 How may they be represented?
At all stages of the administrative procedure, a party may be represented, unless it has to act in person, or be assisted if this possibility is not ruled out in view of the urgency of an official inquiry. The person representing or assisting the party in question must possess civic rights (Article 11 LPA).
In administrative procedures, in both the first and final instance, there is no obligation to be represented by a lawyer (see Article 11 LPA; conversely Article 40 LTF).
Nevertheless, there are provisions requiring parties to be represented by an attorney: anyone who is party to an administrative procedure concerning intellectual property and who is neither resident in nor has his head office in Switzerland must be represented by an attorney established in Switzerland (Article 42 LPM; Article 5 OPM; Article 18 LDes; Article 5 ODes; Article 13 LBI and Article 8 OBI). In addition, if more than 20 people submit collective or individual applications to defend the same interests, the authority may require them to select, for the procedure, one or more representatives (Article 11a LPA).
9.2.3 Are there requirements for mandatory personal appearances before the administrative authority by the right holder?
The parties are required to collaborate with the court to establish the facts of the case at hand and have a wider obligation under a federal law to provide or disclose information. The authority may declare applications inadmissible if the parties refuse to cooperate insofar as they can be expected to do so (Article 13 LPA).
9.3 What authority do the administrative authorities have to order, at the request of an opposing party, a party to an administrative procedure to produce evidence which lies within its control?
The LPA does not contain any direct or exhaustive answer to this question. With regard to the procedure of taking evidence, the rules of Federal Act on Federal Civil Procedure (PCF, RS 273) apply mutatis mutandis (Article 19 LPA), namely those relating to proof and evidence such as that provided by witnesses, documents, visual inspection and experts. The parties are required to produce in the legal proceedings all the evidence which lies within their control (see Article 50(1) PCF). If a party claims that a document containing a crucial item of evidence lies within the control of the opposing party or a third party, the court may, at the request of that party, order the opposing party or third party to present that item of evidence.
If a party disputes being in possession of an item of evidence, the judicial authorities may call upon it, subject to the statutory penalties, to indicate where this item of evidence (e.g. a document) can be found (see Article 50(1) PCF).
Documents which may not, because of their nature, be produced in court or which would damage legitimate interests may be consulted in situ (Article 53 PCF).
If a document is to be found within the control of a third party, that party is required to present the document in question. This obligation is waived if the content of the document concerns facts in respect of which it could refuse to give evidence as a witness pursuant to Article 42 PCF (see Article 51(1) CPC).
In the event of a refusal to cooperate, the authority may apply statutory fines (Article 292 of the Criminal Code (CP)) or direct enforcement against the person of the obligor or his assets (Article 41 LPA). The appeals authority may reprimand or impose a disciplinary fine of up to SwF 3'000 on the parties or their representative if they break with the conventions or disrupt the conduct of a case (Article 60 LPA). It should be noted that the authority must not apply a means of constraint which is more rigorous than required by the circumstances (proportionality rule; Article 42 LPA).
9.4 What means exist to identify and protect confidential information brought forward as evidence?
The party or its attorney is entitled to consult, under the auspices of the authority called upon to hear and determine the matter, all documents serving as evidence (Article 26(1) LPA). The authority may refuse permission to consult the documents only on the following conditions: if important public interests of the Confederation or the Cantons (in particular the internal or external security of the Confederation) or important private interests (particularly those of the opposing party) require that secrecy be maintained or if the interests of an official enquiry which has not yet been closed so require (Article 27(1) LPA). Refusal to authorize consultation of documents may extend only to those which have to be kept secret (Article 27(2) LPA). The provisions of the Federal Law on Civil Procedure (PCF) apply mutatis mutandis to the protection of confidential information in the production of the documents held by third parties and in the procedures governing the giving of evidence (Article 19 LPA, which has a cross reference to Article 51 PCF). The judge may order a document containing confidential information to be concealed wholly or partly from the opposing party or where necessary from both parties (see Article 38 PCF). If there are grounds for withholding only certain passages of a document, the court may order those passages to be concealed from view by affixing seals or in some other way (see Article 51(1) PCF). It may also order the presiding magistrate or a delegation from the court to examine confidential information at the premises of the holder of that information, in order to prevent legitimate interests from being damaged by the disclosure of the documents.
9.5 Describe the remedies that may be ordered by the administrative authorities and criteria, legislative or jurisprudential, for their use:
An IPR holder whose IPR is being or is likely to be infringed must ask the civil judicial authorities to grant injunctions (see the reply to question 5.1). The Swiss Federal Institute of Intellectual Property cannot grant injunctions. The Federal Administrative Court may grant injunctions to uphold an existing situation or to secure threatened interests (Article 56 LPA).
9.5.2 Damages, including recovery of profits, and expenses, including attorney's fees
An IPR holder whose right is being or is likely to be infringed must ask the civil judicial authorities to award damages (see reply to question 5.2.1).
The competent authority also determines the procedural and legal costs (Article 63 and 64 LPA). Thus the Swiss Federal Institute of Intellectual Property, for instance, decides by ruling on the opposition itself, whether and to what extent the costs of the party which wins the case will be borne by the losing party (Article 34 LPM).
Procedural costs: as a general rule, the procedural costs, which comprise the fee for granting the order, the administrative fees and disbursements, are borne by the losing party. No procedural costs may be awarded against the federal authorities. Costs may be imposed against a party that contravenes procedural rules (Article 63 LPA).
Legal costs: The competent authority may, automatically or upon request, award the party which has won on all or some of the counts, compensation for the essential, relatively high expenses it has incurred, particularly in respect of attorney's fees (Article 64 LPA).
The rules on costs and compensation in connection with administrative proceedings are contained in the Ordinance on Costs and Compensation in respect of Administrative Procedures of 10 September 1969 (RS 172.041.0).
9.5.3 Destruction or other disposal of infringing goods and materials/implements for their production
The destruction or other disposal of such goods may be ordered only by the judicial authorities. See reply to question 5.3. Under certain circumstances, Customs Authorities may destroy infringing goods without judicial authority (see reply to question 19).
9.5.4 Other remedies
The administrative authorities may not order other remedies such as those described in the reply to question 5.4.
9.6 In what circumstances, if any, do administrative authorities have the authority to order the infringer to inform the right holder of the identity of third persons involved in the production and distribution of the goods or services found to be infringing and of their channels of distribution?
While administrative authorities do not have this authority, civil and criminal authorities do and may order the infringer to reveal the identity of third persons involved in the infringing activity to the court. The right holder may take advantage of his procedural rights to gain access to such information. The infringer is subject to sanctions if he refuses to cooperate without valid reasons.
9.7 Describe provisions relating to the indemnification of defendants wrongfully enjoined. To what extent are public authorities and/or officials liable in such a situation and what "remedial measures" are applicable to them?
See reply 7.2.
Under the Federal Law on the Liability of the Confederation, Members of its Authorities and its Officials (LRCF, RS 170.32), the Confederation is liable for the damage caused unlawfully to a third party by an official in the performance of his duties, irrespective of whether the official was negligent. The injured party cannot bring an action against the negligent official. If a third party claims damages from the Confederation, the latter immediately notifies the official, against whom it could exercise a right of appeal (Article 3 LRCF). If the Confederation compensates for the damage, it may bring an action for indemnity against the official if he caused the damage intentionally or as a result of gross negligence, even after the employer/employee relationship has been terminated (Article 7 LRCF). The official is liable for damage caused directly to the Confederation as a result of a violation of his official duties, either intentionally or through serious negligence (Article 8 LRCF). The general provisions on the creation of obligations resulting from unlawful acts (Code of Obligations) are applicable to the Confederation's claims against its officials (Article 9(1) LRCF). The provisions concerning officials apply inter alia to members of the Federal Supreme Court, the Federal Administrative Court, the Federal Patent Court and the Federal Criminal Court, members of the independent federal authorities and of the federal administration, to officials and other servants of the Confederation and to all persons directly entrusted with public law tasks by the Confederation (Article 1(1), Article 2(1), Articles 3 to 10 LRCF). Under the same law criminal proceedings are also possible if felonies or misdemeanours are committed by officials in the performance of their duties (Article 13 et seq. LRCF). Provision is also made for disciplinary liability (Articles 17 18 LRCF). If a body or an employee of an independent institution of the ordinary civil service entrusted by the Confederation with carrying out public law tasks wrongfully causes, in the performance of these activities, damage to a third party, the institution is liable for this wrong vis à vis the injured party and the Confederation is liable, vis à vis the injured party, for the damage in respect of which the institution is not able to provide compensation. It can as can the institution take action against the negligent official (Article 19 LRCF).
9.8 Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost.
Cost: For the charges and costs of proceedings with the Swiss Federal Institute of Intellectual Property, see the Ordinance on the Charges of the Swiss Federal Institute of Intellectual Property, SR 232.148).
For charges, costs and compensations in administrative procedures, see the Ordinance on Costs and Compensation in respect of Administrative Procedures (RS 172.041.0) with cross reference to the rules on Costs and Compensation in respect of Procedures at the Federal Administrative Court (RS 173.320.2).
With regard to the cost of proceedings under the auspices of the Customs Authorities, see the reply to question 17.
Length: The period of time permissible for an authority to decide cannot be determined in the abstract. It depends on a number of factors, including the complexity of the case and the interests at stake.
For opposition proceedings, it is difficult to give a precise average figure, because the length depends very much on the complexity of the case, the number of exchanges of documents, extensions of the time limits, the suspensions of proceedings and whether or not there is more than one opposing party. For instance, for a simple case (with a single exchange of documents and only three extensions of the periods allowed for replying), the length will be between eight and 12 months. The Swiss Federal Institute of Intellectual Property endeavours to ensure that the proceedings are completed swiftly.
An appeal to the Federal Administrative Court against a decision to have a judgment set aside can take on average eight to 10 months. It should be pointed out that a party can at any time appeal to the supervisory authority on the grounds of a miscarriage of justice or unjustified delay against an authority which, without good reason, refuses to act or delays taking a decision (Article 46a LPA).