Jürg Simon

What has been your proudest professional achievement of the last 12 months?

I would like to mention two achievements of my team.

First, we successfully represented Apple before the Swiss Federal Administrative Court, upholding an appeal concerning protection of the iconic apple rendering for sound and video recordings in Switzerland (B-4493/2022). The case is fundamentally important for the assessment of the protection of all trademarks that could have so-called ‘thematic content’ and will alter Swiss jurisprudence in that regard.

We also successfully represented Comité Champagne (CIVC) in two cases at the Swiss Federal Supreme Court. The court decided on the dispute about the ‘Commune de Champagne’ protected designation of origin (PDO) in two judgments (2C_407/2021; 2C_381/2021).

In 2021 the Canton de Vaud introduced a PDO – ‘Commune de Champagne’ – for still white wines from the Chasselas grape, which is grown in Champagne. CIVC challenged this action before the Constitutional Court of the Canton Vaud. The court agreed with CIVC that this new PDO explicitly contradicted the exclusive protection for the designation ‘Champagne’ by Switzerland’s bilateral agreement of 1999 with the European Union on trade in agricultural products. It ruled, in essence, that this bilateral agreement prevails over the TRIPS Agreement. The other parties’ appeals to the Swiss Supreme Court were unsuccessful.

In-house counsel are seeing increasing convergence in their roles, covering more ground from broader brand protection to copyright to trade secrets. What advice would you give to those having to combine these different streams into their practice?

This is nothing new. It has always been a necessity for IP professionals – in-house or private practice – to keep an open mind and consider all the different legal options available. It is a challenge, but it makes the lives of IP professionals very interesting.

What is your take on the proposed shift in the EUIPO’s role when it comes to intellectual property (ie, its growing involvement in SEP issues)? Do you have concerns about how this will affect the trademark sphere?

We will see. Actually, I do have not specific concerns with regard to the trademark sphere.

Drawing on your extensive litigation experience, what are the key characteristics of a winning strategy before the courts?

Facts, facts, facts. Work on the facts as hard as you can. Refer to precedents as much as you can and explain in as much detail as possible why these are – or are not – applicable in your case. Never miss out a precedent that you don't like; your opponent or the court will find it. Tackle it and discuss it.

Which decisions or legislative developments are having the biggest impact on IP strategy in Switzerland right now, and why?

The Apple judgment mentioned above will have a positive impact on Switzerland’s trademark space because it will lead to a very reasonable change in the Swiss Trademark Office’s rather strict practice. On a legislative level, Switzerland is preparing to revise the Patent Act, which should be especially beneficial for SMEs.