Defending your trademark against counterfeiting

Registering a trademark is only the first step: the right is worth as much as your ability to enforce it. Counterfeiting — products that imitate your sign, domains that exploit it, copies sold online — erodes revenue, reputation and, if ignored for too long, the very strength of the trademark. In Switzerland you have concrete tools to defend yourself, but they only work if you are the one to activate them: no authority polices the market on your behalf.

First of all: monitoring

You cannot defend yourself against what you cannot see. Defence starts with surveillance:

• monitoring of new filings with the IPI and foreign offices, to intercept similar trademarks before they are registered;
• watching the market and online: marketplaces, social media, search engines, domain names;
• opposition within the deadlines against confusingly similar trademark applications: in Switzerland there is an opposition procedure before the IPI, faster and cheaper than a lawsuit.

Intervening early costs less and preserves the distinctiveness of the trademark.

The cease-and-desist: first intervention

When an infringement emerges, the first step is almost always a cease-and-desist letter to the responsible party: the unlawful use is challenged, cessation is demanded, the withdrawal of the products and sometimes the provision of information on origin and quantities. Many disputes close here, without a trial. The cease-and-desist must be calibrated: too weak, it achieves nothing; too aggressive against a use that is actually lawful, it can backfire (abuse of rights, counter-actions).

Civil action

If the cease-and-desist is not enough, the owner can take civil action requesting:

• the cessation of the unlawful use and the prohibition for the future;
• damages or the surrender of the profit obtained by the counterfeiter;
• the destruction of the counterfeit products;
• the publication of the judgment, when useful.

In urgent cases, interim measures (provisional measures) can be requested to rapidly block the infringement, for example before a trade fair or a launch. Intellectual property disputes have specialised channels in Switzerland, with the Federal Patent Court for patents and the competent cantonal courts for trademarks.

Customs intervention

Against the import of counterfeit goods, an effective weapon is the application for customs intervention. The owner notifies their trademark: customs can thus block suspicious shipments of products that infringe the trademark, giving time to activate the legal avenues. It is a precious tool when counterfeiting comes from abroad.

Online counterfeiting

Much of today’s infringement passes through the web. The practical tools:

• notice-and-takedown procedures of marketplaces and platforms to remove unlawful listings;
• actions against the abuse of domain names (cybersquatting), including out-of-court dispute resolution procedures for domains;
• interventions against the misleading use of the trademark in online advertising and keywords.

Speed counts: online, counterfeiting multiplies quickly.

Use the trademark, or risk losing it

Defending the trademark also means using it. In Switzerland a trademark not used for the registered class for a prolonged period (as a rule five years) can be challenged for non-use. Keeping evidence of use (invoices, catalogues, advertising material) is part of the defence: without actual use, even the strongest right weakens.

Frequent mistakes

• Not monitoring: discovering imitations too late, when they have already taken root.
• Tolerating infringements: prolonged inaction weakens the trademark and its distinctiveness.
• Disproportionate DIY cease-and-desist letters, which expose you to counter-actions.
• Ignoring the customs tool against counterfeit imports.
• Not keeping evidence of use, remaining exposed to revocation for non-use.

How SIH ONE supports you

The Tax & Legal division supports trademark owners in active defence — setting up monitoring and oppositions, calibrated cease-and-desist letters, civil and interim actions, applications for customs intervention and removal of online infringements — integrating enforcement into the overall IP protection strategy. If someone is exploiting your trademark, let’s react with the right tools.