Simon Holzer

As a lecturer of IP law at the University of Zurich, what is one key piece of advice you would give to young lawyers considering a career in this field?

My key advice to students considering a career in the field of IP law is to cultivate a deep understanding that they must continue to develop their skills in the fast-evolving landscape. Stay curious, embrace new technologies (particularly AI) and develop a multidisciplinary approach to solving problems. Further, building strong foundations in both legal theory and practical application is crucial when it comes to navigating the complexities of IP law.

You are celebrated for being an excellent litigator. What are the key characteristics of a winning strategy before the courts, particularly when it comes to trademark and GI cases?

The critical elements of a successful strategy involve a meticulous understanding of the client's brand, a thorough analysis of the market and a strategic combination of offensive and defensive measures. Being adaptable, anticipating counterarguments and having a nuanced understanding of the industry also make a significant difference.

What recent decisions or legislative developments are having the biggest impact on trademark strategy in Switzerland right now?

For many years, the Swiss Institute for Intellectual Property (IPI) followed a very strict practice when examining whether a trademark is descriptive or sufficiently distinctive.

Over time, the IPI has established guidelines for trademark applications containing geographical designations (GIs or indications of origin). In such cases, it has long been the IPI's practice to request a geographical restriction of the list of goods and services to the country of origin in question. When a trademark application contained a Swiss geographical designation, the IPI usually requested that the following sentence be added to the claimed goods and services: "all the aforementioned goods/services of Swiss origin". 

However, the Swiss Federal Supreme Court has overturned this practice and noted in a recent ruling that the IPI's approach to restrict the claimed services of trademark applications with geographical designations was not justified under the rationale of the law. In late 2021, the IPI announced that after a review of its examination practice, this should be eased, essentially adopting the EUIPO’s approach.

Therefore, the IPI will no longer request a geographical restriction of the list of goods and services for trademark applications containing a geographical designation, unless the application falls into a category for which a geographical restriction is required based on an explicit or implicit obligation under international treaties.

In a very recent case, the IPI refused Apple's trademark registration for a depiction of an apple for sound, video and film recordings and corresponding data carriers in Class 9, deeming it to be descriptive of the claimed goods. Apple appealed this decision to the Federal Administrative Court, which supported its position and instructed the IPI to grant protection to Apple’s mark in Switzerland for all claimed goods. This case led the IPI to reconsider its restrictive practice concerning trademarks for content-related goods.

In summary, when it comes to the assessment of sufficient distinctiveness or descriptiveness, the IPI’s practice has become much more in line with the EUIPO’s practice and that of other European jurisdictions, which is a very welcome development for Swiss practitioners and trademark applicants. 

Your experience spans a wide range of industries and includes SEP/FRAND cases as well as trademarks. 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)? 

It will be very interesting to see what role the EUIPO will play in both trademark and SEP matters in the future. Switzerland is not a member of the European Union and we are observing with some concern that the patent system – which has so far been primarily shaped by the EPO at the European level – is increasingly becoming an EU topic with the UPC, and now there is the possible role of the EUIPO in SEP matters too. The EUIPO will have to deal with the interpretation of patent claims and standard essentiality. It will be interesting to see how this will fit in with the competencies of the UPC and its Patent Mediation and Arbitration Centre, for example.

What are the biggest trademark challenges facing your pharma clients at present, and how are you helping them to overcome these?

A major problem for pharmaceutical clients is the overcrowded registers in Class 5 (which also includes pharmaceutical products), as it is almost inevitable that trademark conflicts will arise somewhere sooner or later. In this regard, it can be helpful to describe the claimed goods very specifically and avoid using broad umbrella terms (even if these would be accepted by the relevant trademark office).

In addition, clients must take into account the practice of the relevant trademark authorities, and that of the regulatory bodies for pharmaceutical products (eg, the Food and Drug Association, European Medicines Agency or Swissmedic).

Pharmaceutical regulatory bodies assess the brand name under which a medicinal product will be marketed as part of the marketing authorisation for it. This assessment is based on public health concerns and usually takes into account the World Health Organisation (WHO)’s resolution on the protection of international non-proprietary names (INNs) or stems to prevent any potential risk of confusion. A trademark office’s assessment of the registrability of pharmaceutical marks, however, often has no specific legal basis for taking such health-related concerns into consideration.

Problems arise if trademarks for pharma products include INNs or stems. INNs are assigned to pharmaceutical substances by the WHO, so that each substance can be recognised by a unique name. These names are needed for clear identification, safe prescription and dispensing of medicines, and for communication and exchange of information among health professionals. Stems define the pharmacologically-related group to which an INN belongs. 

Considering the descriptive nature of INNs, objections are often raised for Class 5 goods where the filed trademark application is an INN – or where an INN appears in an application and the other elements of the application are also descriptive or non-distinctive.

Another issue in pharmaceutical trademarks is the risk of genericism. If a trademark becomes the common name for a particular drug, it may lose its distinctiveness and legal protection. This is a particular problem for innovative products that enjoy patent protection – and therefore exclusivity – for a certain period of time. We advise our clients on how to ensure that their brands do not become generic.

How can rights holders use different IP rights (eg, trademarks, design rights) to protect their brands in Switzerland?

Switzerland has a fairly liberal case law when it comes to the combination of trademark rights, copyrights, patent rights and unfair competition legislation. We adopt a holistic approach for our clients and usually proceed from several legal bases, which is often successful.

You have won praise as a “leader in the contentious sphere”. What is the secret to your success?

This question should be addressed to my clients. Building strong relationships with clients and maintaining integrity and excellence contribute to success in the contentious sphere in my view. Soft skills are often just as crucial as excellent legal skills. 

What are some of the most common mistakes that foreign rights holders make when seeking to enforce their rights in Switzerland, and how can they avoid them?

A typical error that international rights holders make when enforcing their rights in Switzerland is underestimating the frontloaded legal system. In order to enforce one's rights in court, the entire case must be prepared in Switzerland when the first brief is submitted to the court. In preliminary injunction proceedings in particular, parties only have one opportunity to present their positions in full. The first written briefs are therefore critical.

Further, it should be remembered that Swiss litigation has a long tradition of settlements so it should not be considered strange when judges attempt to mutually settle a case or formulate settlement proposals.

The current legal services landscape is competitive and high-quality legal work is considered a minimum. How do you add value for clients in such an environment?

In a competitive legal services landscape, adding value goes beyond delivering high-quality legal work. I add value for clients by providing strategic advice that aligns with their business goals and maintaining open and transparent communication. Additionally, staying proactive in identifying and mitigating potential risks ensures that clients receive not only legal expertise but also a comprehensive and forward-looking service. As a law firm, we also promote the use of avant-garde technologies so that we can always offer our clients the latest and most efficient support.