"Stop Using That Name!" – What to Do When a Warning Letter Lands on Your Desk

a) Is there actually a valid earlier trademark?

You can readily check Swiss and international registrations yourself in the public registers (e.g. Swissreg for Swiss marks). Confirm that the mark exists, is registered, is still in force, and that it is genuinely older than your use or registration. If there is only an application or an expired registration, the picture changes.

b) Are the signs identical or similar?

Two identical signs used for identical goods or services are the clearest case of infringement. Most disputes, though, are about similarity. Swiss practice looks at three dimensions, and similarity in any one of them can be enough:

• Visual – do the words or logos look alike (spelling, length, graphic elements)?
• Phonetic – do they sound alike when spoken aloud?
• Conceptual – do they carry a similar meaning or evoke the same idea?

A helpful test: imagine an average, reasonably attentive customer who does not see the two brands side by side but remembers one and later encounters the other. Would they plausibly mix them up or assume a connection? The more distinctive the earlier mark, the more protection it gets; weak or descriptive elements count for little.

c) Do the goods and services overlap?

Trademark protection is typically tied to the specific goods and services for which the mark is registered (classified in "classes"). So the question is whether your products or services are the same or similar to theirs – think about whether they serve the same purpose, reach the same customers, or are sold through the same channels. Similar signs for genuinely unrelated goods and services often do not create a likelihood of confusion.

There's an important interplay here: the more similar the signs, the less overlap in goods or services is needed for confusion – and vice versa.

d) Is their trademark famous/well-known in Switzerland?

This is a key exception. Under Art. 15 MSchG, the owner of a famous/well-known mark (berühmte Marke) can prohibit its use for any type of goods or services – even completely unrelated ones – where that use would take unfair advantage of, or harm, the mark's reputation or distinctiveness. This is cross-class / cross-goods-and-services protection.

So if the other side is a famous/well-known brand, don't assume "different products = no problem". But note that being famous/well-known is a high bar: it has to be proven with real evidence of intensive use and recognition in Switzerland – it is not enough to simply assert it. The burden of proof is high.

e) Is their trademark older than five years – and is it actually being used?

This is one of the most useful checkpoints, and it's frequently overlooked.

Under Art. 12 MSchG, a trademark owner who has not genuinely used the mark for the registered goods/services for an uninterrupted period of five years can, in principle, no longer enforce it – unless there are proper reasons for the non-use.

Practically, this means:

• If their mark is younger than five years, it sits in a "grace period" and non-use cannot be held against it yet.
• If their mark is older than five years, ask the practical question: are they actually using it in Switzerland for the relevant goods and services? If not, you may have a powerful defense.

a) Are the names identical or similar?

A registered company name enjoys a degree of exclusivity, but the assessment again turns on whether an average person would confuse the two businesses. Generic or descriptive components (industry terms, legal-form suffixes like "AG" / "GmbH" / "Sàrl", geographic add-ons) carry little weight; the distinctive core of the name is what matters.

b) Further criteria

This is often decisive. Consider:

• Where does each business actually operate? A purely local business and a business at the other end of the country may realistically not compete for the same customers.
• The strength and reach of the name. A well-established, nationally known name may get broader protection than a small local one.
• Type of legal entity. Sole proprietorships (Einzelfirma) enjoy protection under company law within their own region, whereas commercial companies (Handelsgesellschaften, e.g. AG, GmbH) enjoy such protection throughout Switzerland.

Also keep the categories distinct: a company name mainly protects against others using a confusingly similar company name, and a trademark protects against confusing use as a brand. If the other side only has a company-name right, they may have limited grounds to stop your use as a mere product brand. Aside from that, and where a plain trademark or company-name claim doesn't fit, the other side might fall back on unfair competition law (UWG), which protects against the likelihood of confusion between signs, unfair comparative advertising, unfair imitation, and damage to reputation.