Legal handling of service brands
Although a great deal has already been done towards the standardisation of brand legislation, brand legislation itself (thereupon results in the protection of trademarks) is part of the legal system of a country, and as such is a national matter. It applies across national borders, that companies deal with the brand guideline aspects more and more and approve of international dimensions, but notwithstanding must make every legal declaration in matters of brand legislation from the perspective of a concrete legal system. This article is written from the perspective of Swiss law. Whenever the description, “national” or “international” is used, whatever the definition of open concepts is; is carried out from a Swiss perspective.
Every economic effort in the area of brand policy is accompanied by legal considerations, what, how and where a company is, in protecting the brand symbol and sustaining this protection. Meanwhile, in many countries service brands have been protected for decades, however, this has only been possible in Switzerland since 1993. National law with regards to the protection of brands and origin of goods (hereafter brand laws) allows for intangible property rights the first time in the history of Switzerland and also sanctions the protection of the service provider’s identification marking of their products. In a country where the service sector is as least as important as the merchandise sector, this has led to a wave of new considerations concerning market strategies. Almost five years later after coming into force the brand laws are still continuing.
From a legal perspective the service brands in Swiss law will be dealt with in the same way as merchandise brands. The law makes no difference with regards to the regulations concerning service brands, although in reality considerable differences do exist. This was not in the registration procedure itself, but was in fact in the registration precedent considerations and later in the registration of the necessary brand management.
In Switzerland and in most other countries with a tradition of civil law (in contrast to countries with a legal system based on common law) where a brand exists, at first it must be entered in a brand register. Therefore the legal handling of a brand can be separated into three clear distinctive phases, namely the pre-registration phase, the registration phase and the post registration phase.
This article tries to provide a short overview concerning these three phases, as well as deleting the particular relevant points for service brands.
Searching for brands
At first the search for a brand is a marketing question, and if the situation arises it is also a creative question. Both of these matters in the fist instance have little to do with legal aspects. Nevertheless, the design or the concept of a new brand must take into consideration the fact of it taking place, and only then is its survival guaranteed, when it is not identical to or similar to other already existing and corresponding protected brands, which themselves are in the in the ownership of a third person.
Correspondingly, from a legal perspective before going to a lot of expense on large designs or marketing mitigation in introducing a brand, it is recommended that you check with the corresponding authorities about the availability of such a brand. These checks are carried out in Switzerland by the Eidgenössische Institute for Intellectual Property (hereafter “EIGE”), which gives information about the Swiss and other countries abroad with the effects for the Swiss placed brands. The availability of potential brands in countries, which are not members of an International Trademarks Agreement (about International Trademarks Agreements see point 22.214.171.124) can only elicit enquires via the respective countries.
As soon as it has been established that there is no existing identical or similar brands for identical or similar merchandise or services, then the further procedure of entering and stamping the brand can be authorised.
All encompassing brand concept
In most cases the entry of a brand cannot be considered as an isolated matter, but in fact it must be carried out in the framework of an all encompassing company market concept. The importance of such a brand concept, along with the increasing internationalisation of brand policies, makes it necessary, that before a brand strategy is implemented thoughts about the whole brand policies of the company or where applicable the affiliated group have to be given. Within an affiliated group, particularly in the case of an internationally affiliated group any kind of decision in connection with the entry of a brand must be considered from a global perspective. Disagreements and internal conflict about the property ownership of a brand, as well as the connection with intregroup authority to use a brand after an effective entry has been made can only be resolved with great difficulty, or with a great deal of expense. Legally or factually common brand property rights or part of the same are to be avoided.
Correspondingly, when making decisions on property brands the following questions must be taken into consideration: (1) what must be registered, this means, which brands have to be entered. (2) What is the brand registered for, this means for which goods or services must the brand be entered for. (3) Who shall acquire power over the brand, this means who will be the owner of the brand, who will have authorised use, where shall the brand impact unfold, this means in, which countries must the brand be entered. All these questions will be answered in full after the first entry.
What to register?
Concept of the brand
Article 1 paragraph 1 of the brand statute defines the brand as a symbol that is suitable, in differentiating a company’s merchandise or services from other such companies.
What is extremely important in this definition is that the brand transfers distinctions and the function of the trademark as an indication of origin. In this meaning the brand has a distinction or individualistic function, this means no brand exists when the acceptable distinction is missing. However, at the same time you have to take into consideration that to this effect the brand law isn’t defined, in addition what must be determined are the differences between merchandise or services, but it is enough when the mere acceptability exists. What is also important is the emphatic reference of “merchandise or services”. The ability to protect merchandise brands in the Swiss legal system has been fixed for many years, and the ability to protect service brands is without doubt the most important feature of the new statues. Such service brands can be entered by service companies as well as merchandise producing companies, which offer self provided services.
Types of brands
Article 1.2 of the brand statute states that brands are “particularly words, letters, figures, image representations, three dimensional shapes or connections of such elements that come together or include colour“. Through the application of words, “particularly” there is an open concept about the brands advanced condition, however with the restrictions in article 10 paragraph 1, whereupon the brand must be graphically displayed.
In practise the following types of brand are put forward: clear name mark descriptions; (2) name mark descriptions with special graphic descriptions; (3) blips; (4) combined words and blips; (5) three dimensional brands; (6) design brands; and (7) acoustic brands.
In the case of usage of a name mark description or a combined brand it is recommended that for reasons of clear protection, as well as the combined brands and just like the clear name mark descriptions that they are entered and registered.
A brand cannot be used to protect just any goods or services. The recording of a brand can be carried out for defined goods or services, namely for those, for which the reported brand should be used. These goods or services must be described exactly, namely in accordance with the goods and service classifications of the International Agreement of Nice. This classification consists of 42 different classes, which incorporates all goods and/or services.
- Quote paper
- Christian Kollorz (Author), 2010, Brands – and in particular service brands – from a legal perspective, Munich, GRIN Verlag, https://www.grin.com/document/183205