Trade-Related Aspects of Intellectual Property Rights - Checklist of Issues on Enforcement under TRIPS Art. 63.2

I. Introductory Statement Civil and criminal enforcement procedures in Switzerland are mainly governed by procedural laws of the Cantons, by the Federal Law on Jurisdiction and the Federal Law on the Organization of the Judicial System (OJ), unless the federal intellectual property laws contain specific provisions for the enforcement of IPRs. Decisions concerning the civil and criminal enforcement of IPRs are made, in the first instance, by the higher Swiss district courts (cantonal courts). Decisions of the cantonal courts may be appealed to the Supreme Federal Court. In the area of acquisition and maintenance of trademarks, patents and geographical indications, special administrative and opposition procedures are available. Here, the Federal Appeals Committee, known as “Commission de recours en matière de propriété intellectuelle”, has jurisdiction in the area of trademarks and patents and its decisions in opposition cases are final. In cases of geographical indications for agricultural products and processed agricultural products, the Federal Agricultural Office renders decisions on opposition to the registration of a geographical indication. The Commission for Appellations of Origin and Geographical Indications advises the Federal Agricultural Office and the decisions of the latter are subject to appeal to the Supreme Federal Court. For further details on Swiss enforcement procedures, reference is made to the replies from Switzerland to the ‘Checklist of Issues on Enforcement’ in document IP/N/6/CHE/1 of 16 October 1997. Statistical information on the civil, criminal and administrative enforcement of IPRs in Switzerland for the years 2002 and 2003 is set forth below. Included are decisions of the civil and criminal courts at the cantonal level, the decisions of the Federal Appeals Committee and the Supreme Federal Court. Statistical information does not include cases in which IPRs were invoked by the plaintiff but where the court’s findings conclude on violation(s) of competition, antitrust or company law instead. II. Statistical information 2002 a) Explanatory remarks In the field of trademarks, the cantonal judicial authorities communicated 34 cases (15 of them on provisional measures). Twenty-eight of the 34 cases were decided on the merits of the case. In 12 cases, the claims were approved, whereas in 16 cases, they were denied. In the remaining cases, a settlement was agreed between the parties (2), the plaintiff withdrew his claim (3) or the case was dismissed (1). The Federal Appeals Committee rendered 58 decisions. In 20 cases, the appeal was approved, in 19 cases, the appeal was denied. Fifteen cases were settled by the parties or withdrawn and four cases were dismissed. The Supreme Federal Court denied seven appeals and approved one. In the field of copyright and neighboring rights, the cantonal courts rendered 14 decisions, four of them on provisional measures. Eleven cases where decided on the merits of the case (7 approvals and 4 denials). The remaining cases were either settled by agreement between the parties (2) or dismissed (1). Seizure of infringing material was ordered in various instances. The Supreme Federal Court denied one and approved one appeal. In the field of trademark and copyrights, the customs authorities intervened in 69 occasions and seized goods for a total value of Sw F 3.5 million. In the field of patents, the cantonal judicial authorities communicated nine decisions (four of them on provisional measures). The cantonal courts decided seven cases on the merits of the case (three approvals and four denials). Two cases were dismissed. The Federal Appeals Committee rendered four decisions, one approving and the other one denying the claim. Two cases were dismissed. The Federal Supreme Court denied all three appeals that were made in 2002. Finally, in the field of designs, the one request for provisional measures that was reported was denied by the cantonal courts. b) The figures for the year 2002 IPRs/authority;Cantonal Courts Decisions/prov. measures;Customs interventions;Fed. Appeals Committee;Supreme Fed. Court Trademarks;34/15;69;58;8 Copyright+NRs;14/4;;0*;2 Patents;9/4;**;4*;3 Designs;1/1;0;0*;0 * No special administrative opposition procedure for holders of prior rights available ** No border measures available for patent infringing goods III. Statistical information 2003 a) Explanatory remarks In the field of trademarks, the cantonal judicial authorities communicated 42 cases (16 of them on provisional measures). Out of these 42 cases, 29 where decided on the merits of the case: Infringement of a trademark was approved in 20 cases and denied in nine cases. In the other 13 cases, either a settlement was agreed between the parties (3) or the plaintiff withdrew his claim (10). The Federal Appeals Committee rendered 84 decisions. Sixty-four cases where decided on the merits of the case (13 decisions approving and 51 decisions denying the claims), 19 cases were settled by the parties or withdrawn and 1 case was dismissed. The Supreme Federal Court denied six appeals and approved two. In the field of copyright and neighboring rights, the cantonal judicial courts rendered 23 decisions (13 of them on provisional measures). Nineteen cases were decided on the merits of the case: A violation of copyright was approved in 11 of these cases, in eight cases, the claim was denied. In the four remaining cases, the claim was dismissed (1), a settlement was agreed (1) or the plaintiff withdrew his claim (2). Seizure of infringing material was ordered in various instances. The Supreme Federal Court denied four appeals and approved one. In the field of trademark and copyrights, the customs authorities intervened in 212 occasions and seized goods for a total value of Sw F 3.7 million. In the majority of cases, disputes were settled. In the field of patents, the cantonal judicial authorities communicated 26 cases (four of them on provisional measures). The cantonal courts rendered 16 decisions on the merits of the case, ten of them granted provisional measures or approved patent violations, six of them denied the claims. In the ten remaining cases, a settlement was agreed (9) between the parties or the plaintiff withdrew his claim (1). The Federal Appeals Committee rendered one decision, dismissing the claim. The Federal Supreme Court denied five appeals and approved two. Finally, in the field of designs, the cantonal judicial authorities communicated six cases (one on provisional measures). One of these cases was approved, the other five were denied. b) The figures for the year 2003 IPRs/authority;Cantonal Courts Decisions/prov. measures;Customs interventions;Fed. Appeals Committee;Supreme Fed. Court Trademarks;42/16;212;84;8 Copyright+NRs;23/13;;0*;5 Patents;26/4;**;1*;7 Designs;6/1;0;0*;0 * No special administrative opposition procedure for holders of prior rights available ** No border measures available for patent infringing goods

4. Civil and Administrative Procedures and Remedies

(a) Civil judicial procedures and remedies

1. Specify the courts which have jurisdiction over IPR infringement cases.

2. Which persons have standing to assert IPRs? How may they be represented? Are there requirements for mandatory personal appearances before the court by the right holder?

3. What authority do the judicial authorities have to order, at the request of an opposing party, a party to a proceeding to produce evidence which lies within its control?

4. What means exist to identify and protect confidential information brought forward as evidence?

5. Describe the remedies that may be ordered by the judicial authorities and criteria, legislative or jurisprudential, for their use:

injunctions;
damages, including recovery of profits, and expenses, including attorney's fees;
destruction or other disposal of infringing goods and materials/implements for their production;
any other remedies.

6. In what circumstances, if any, do judicial 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?

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?

8. Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost.

(b) Administrative procedures and remedies

9. Reply to the above questions in relation to any administrative procedures on the merits and remedies that may result from these procedures.

5. Provisional Measures

(a) Judicial measures

10. Describe the types of provisional measures that judicial authorities may order, and the legal basis for such authority.

11. In what circumstances may such measures be ordered inaudita altera parte?

12. Describe the main procedures for the initiation, ordering and maintenance in force of provisional measures, in particular relevant time-limits and safeguards to protect the legitimate interests of the defendant.

13. Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost.

(b) Administrative measures

14. Reply to the above questions in relation to any administrative provisional measures.

6. Special Requirements Related to Border Measures

15. Indicate for which goods it is possible to apply for the suspension by the customs authorities of the release into free circulation, in particular whether these procedures are available also in respect of goods which involve infringements of intellectual property rights other than counterfeit trademark or pirated copyright goods as defined in the TRIPS Agreement (footnote to Article 51). Specify, together with relevant criteria, any imports excluded from the application of such procedures (such as goods from another member of a customs union, goods in transit or de minimis imports). Do the procedures apply to imports of goods put on the market in another country by or with the consent of the right holder and to goods destined for exportation?

16. Provide a description of the main elements of the procedures relating to the suspension of the release of goods by customs authorities, in particular the competent authorities (Article 51), the requirements for an application (Article 52) and various requirements related to the duration of suspension (Article 55). How have Articles 53 (security or equivalent assurance), 56 (indemnification of the importer and of the owner of the goods) and 57 (right of inspection and information) been implemented?

17. Describe provisions governing the length and cost of proceedings. Provide any available data on the actual duration of proceedings and their cost. How long is the validity of decisions by the competent authorities for the suspension of the release of goods into free circulation?

18. Are competent authorities required to act upon their own initiative and, if so, in what circumstances? Are there any special provisions applicable to ex officio action?

19. Describe the remedies that the competent authorities have the authority to order and any criteria regulating their use.

7. Criminal Procedures

20. Specify the courts which have jurisdiction over criminal acts of infringement of IPRs.

21. In respect of which infringements of which intellectual property rights are criminal procedures and penalties available?

22. Which public authorities are responsible for initiating criminal proceedings? Are they required to do this on their own initiative and/or in response to complaints?

23. Do private persons have standing to initiate criminal proceedings and, if so, who?

24. Specify, by category of IPR and type of infringement where necessary, the penalties and other remedies that may be imposed:

imprisonment;
monetary fines;
seizure, forfeiture and destruction of infringing goods and materials and implements for their production;
other.

25. Describe provisions governing the length and any cost of proceedings. Provide any available data on the actual duration of proceedings and their cost, if any.