SWITZERLAND

[Zurich; Special to JURIST] Soon, Switzerland will have a new design law. The Federal Design Protection Act of October 5, 2001 has passed the parliament and the referendum period expired on January 24, 2002 (in Switzerland, 50,000 people or 8 cantons may request within a certain "referendum period" that a popular vote be held on the proposed Act). It is up to the Federal Council to formally put the Act into force. The new Act will replace one of the oldest Swiss intellectual property laws. The Design Act currently in force dates back to 1900, with relatively few amendments having been made. The revision of the design law is one more step toward revamping Switzerland's intellectual property system, the first step being the revision of the Trademark Act in 1992, and the second step being the revision of the Copyright Act in 1993. The revision of the design law was initiated by representatives of those industries which are most interested in strong design protection, and it passed the legislative process with relative ease. The goal of the revision is twofold: to take into account the major developments in the economy and, to incorporate the most recent developments in European and international law. Although Switzerland is not a member of the European Union, the legislature is trying to harmonize Swiss law with the law of the European Union.

Moving Toward the New...

The intent of the legislature to replace, rather than amend, the old Design Act is demonstrated in both form and substance. In terms of form, the new Design Act has a completely different structure, and the old German expressions "Muster" (in French: "dessins", in Italian "disegni") and "Modelle" (in French: "modèles", in Italian: "modelli") are collectively replaced with the English statement "Design". In terms of substance, there are five major changes worth mentioning:

• First, the law introduces a new second prong as a condition precedent for protection under the Design Act. In order to be eligible for design protection, the design must not only be novel, but it must also have "individual character". This new requirement was introduced in order to adjust Swiss law to the law of the European Union (see, inter alia, art. 3(2) of the Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 on the legal protection of designs).
• Second, the scope of design protection is extended. While, under the previous Act as interpreted by the courts, design protection was available only in the case of actual copying of the protected design, protection is now available also in the case of mere substantial similarity.
• Third, again following European Union law, the maximum duration of design protection is extended from 15 to 25 years as of the date of filing.
• Fourth, contrary to the situation in other fields of intellectual property, the exclusive licensee of a protected design now has standing to sue for design infringement, unless the license agreement specifically excludes the licensee's right to sue.
• Fifth, the applicant may ask for a postponement of the publication of the design for a maximum period of 30 months as of the filing or the priority date. This option allows the design to be kept secret until it can be brought to the market.

...While Keeping Some of the Old

Some features of the old law, however, particularly the ones perceived by the industry as advantageous, remain unchanged. The most important one is the simple, expeditious and inexpensive pre-grant procedure. Contrary to U.S. patent law, for instance, the Swiss Federal Institute of Intellectual Property (the Swiss equivalent to the USPTO) neither examines nor determines whether the design application is novel and has an individual character. In other words, the Swiss Federal Institute of Intellectual Property simply verifies that the application relates to subject matter which can be protected under the Design Act and makes sure that the design does not violate federal law, international treaties, or the public order. Ultimately, it is left to the courts to decide whether the registered design is actually novel and has individual character, but only if this question is made the subject of litigation brought about by a competitor of the design holder. Therefore, it is and will remain rather easy and inexpensive to obtain a registered design right in Switzerland.

Dr. Cyrill P. Rigamonti, Esq.
JURIST Switzerland Correspondent
January 25, 2002

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