A Portuguese technology company had spent several years building a distinctive brand. Its product name – registered under the relevant Nice classification in the EU – was generating meaningful revenue in Central European markets. Then a Swiss-registered competitor began using a near-identical sign on comparable goods. The Portuguese company faced a stark choice: accept the erosion of its brand position in Switzerland, or pursue enforcement proceedings in a jurisdiction it had never litigated in before.
This case study describes how Ferraz & Whitmore structured an infringement claim and opposition strategy for a cross-border trademark dispute in Switzerland. The matter combined Swiss intellectual property legislation, opposition proceedings before the Swiss Federal Institute of Intellectual Property, and civil litigation grounded in the Swiss Code of Obligations. The process from initial assessment to a resolved enforcement position ran approximately fourteen months.
The following sections set out the client's situation, the legal strategy chosen, the key milestones encountered, and three transferable lessons for businesses facing similar cross-border IP challenges in Switzerland.
Client profile and the challenge
The client was a mid-sized technology business incorporated in Portugal as a private limited company. It had developed a software-adjacent product line sold under a single brand across multiple EU markets. The brand had been registered in the EU, but no separate trademark application had been filed in Switzerland – a country that sits outside the EU's trademark regime and requires independent IP registration.
The conflicting mark had been filed by a Swiss Aktiengesellschaft (AG). the Swiss joint stock company form, equivalent in function to a public limited company – and listed in the Handelsregister Schweiz (Swiss Commercial Register). The competing sign was not identical to the client's mark, but the phonetic and visual similarity was strong enough to create genuine confusion among end users. The infringing party had also begun expanding into markets where the client was actively selling.
The core challenge was threefold. First, the client had no pre-existing Swiss trademark registration to assert directly. Second, the Swiss litigation environment – while predictable and well-structured – requires proceedings in one of the national languages, adding procedural complexity for a foreign claimant. Third, the client's management was uncertain whether the commercial value at risk justified the cost and duration of Swiss proceedings.
Our assessment was that inaction carried the greater risk. A Swiss registration in the infringing party's name, left unchallenged, would solidify over time and potentially be used to block the client's own future trademark application in Switzerland. The window for opposition proceedings was still open. That window would not remain open indefinitely.
Legal strategy: opposition first, litigation in reserve
The strategy we recommended had two tracks running in parallel. The primary track was to file opposition proceedings against the infringing party's pending Swiss trademark application. Swiss intellectual property legislation provides a defined opposition window after a trademark is published. Filing within that window is significantly less costly than civil litigation and, if successful, prevents registration entirely.
The secondary track was to prepare. but not immediately file. a civil infringement claim under Switzerland's intellectual property legislation and the relevant provisions of the Schweizerisches Obligationenrecht (Swiss Code of Obligations). This governs damages and unjust enrichment in commercial disputes. Keeping the civil claim in reserve created leverage. It also allowed time to gather evidence of actual use and market confusion, which Swiss courts assess carefully.
The Nice classification analysis was central to the opposition. The infringing party's application covered overlapping classes. Demonstrating that overlap – combined with evidence of the client's earlier EU registration and commercial use – formed the factual core of the opposition. Swiss opposition proceedings focus on likelihood of confusion, assessed against the similarity of goods and services under each Nice classification and the visual, phonetic, and conceptual similarity of the marks.
We also filed a separate trademark application for the client in Switzerland. This served two purposes. It created an independent Swiss registration to underpin future enforcement. It also signalled to the opposing party that the client intended to maintain a permanent presence in the Swiss market. For clients managing intellectual property rights in Switzerland, establishing a direct Swiss registration is rarely optional once market activity reaches a meaningful threshold.
The civil litigation track required analysis of whether Swiss courts would recognise the client's EU rights as a basis for interim relief. The answer was conditional. Swiss courts can grant preliminary injunctions in IP matters, but the threshold for urgency is high and the applicant must demonstrate imminent, concrete harm – not merely theoretical risk. We advised the client that the opposition track, if successful, would make interim relief largely unnecessary. If the opposition failed, civil proceedings with a fully documented evidence file would follow.
Key milestones and complications
The opposition was filed within the statutory window. The opposing party responded and contested the similarity of the marks. The proceedings before the Swiss Federal Institute of Intellectual Property extended over approximately eight months – longer than the statutory minimum, partly because the opposing party requested extensions, which Swiss opposition procedure allows within limits.
A significant complication arose mid-process. The opposing party filed a GmbH CH – a Swiss limited liability company – and began using the disputed sign through that new entity. This was a structural manoeuvre designed to create distance from the original registration and complicate enforcement. It did not ultimately succeed, but it required us to broaden the factual scope of the proceedings and document the link between the two entities.
The Bundesgericht (Swiss Federal Supreme Court) has established in its case law that corporate restructuring does not extinguish an infringement claim where the economic activity and sign usage continue through a related entity. This principle guided our evidence strategy: we documented the operational continuity between the two entities through commercial register filings, website records, and market materials.
The client's own trademark application in Switzerland was accepted during this period, providing an additional basis for asserting rights. By the time the opposition proceedings concluded, the client held a registered Swiss mark, a successful opposition record, and a documented file of the opposing party's conduct.
The civil litigation track was ultimately not required. The opposing party, facing both a refused registration and a client now holding Swiss IP registration rights, withdrew from the Swiss market segment in question within approximately two months of the opposition outcome.
To explore how technology-adjacent IP matters intersect with emerging regulatory obligations in Switzerland, our analysis of AI and technology law in Switzerland provides relevant context for businesses operating at that intersection.
Three transferable lessons
Lesson one: act within the opposition window. Swiss IP registration proceedings move on fixed timelines. Once a trademark clears the publication stage without opposition, challenging it becomes substantially harder and more expensive. The opposition route – where available – costs a fraction of civil litigation and can be decisive. Businesses with active EU registrations should monitor Swiss trademark publications in their relevant Nice classification categories as a matter of routine.
Lesson two: file your own Swiss registration before the dispute crystallises. This case would have been materially more difficult without the client's own Swiss trademark application filed early in the process. Switzerland is not covered by EU trademark registrations. A business generating revenue in Switzerland without a local IP registration is exposed. The IP registration provides both a defensive shield and an offensive basis for enforcement. It also demonstrates commercial commitment, which courts and regulators assess in contested matters.
Lesson three: document the economic reality. Not just the legal form. The opposing party's attempt to restructure through a new GmbH CH entity illustrates a pattern seen in cross-border IP disputes: the infringing party uses corporate form changes to complicate enforcement. Swiss courts – including the Bundesgericht – look through formal structures when the economic activity and sign usage are continuous. The lesson for claimants is to build an evidence file that captures commercial reality: website archives, market materials, distribution records, and commercial register history. That file is more durable than any single legal argument.
Clients facing comparable cross-border trademark matters in other jurisdictions may find useful parallels in our case study on trademark dispute proceedings in Portugal, which addresses a similar dual-track strategy in a civil law context.
To discuss how a comparable enforcement strategy could apply to your trademark position in Switzerland, contact us at info@ferrazwhitmore.com.
About Ferraz & Whitmore
Ferraz & Whitmore is an international law firm based in Lisbon, advising business clients across 46 jurisdictions. Our intellectual property practice covers trademark registration, opposition proceedings, infringement claims, and cross-border IP enforcement across both civil law and common law systems. Working with a law firm in Switzerland with deep knowledge of Swiss IP legislation and the Swiss Code of Obligations is essential for any business facing a cross-border trademark dispute. and our team brings that combination of Swiss-market experience and international strategic perspective. We advise international entrepreneurs, institutional investors, and in-house legal teams who require results-oriented counsel across multiple legal systems. To discuss your IP situation in Switzerland or across European markets, contact us at info@ferrazwhitmore.com.
Disclaimer: This publication is provided for informational purposes only and does not constitute legal advice. The information herein should not be relied upon as a substitute for professional legal counsel tailored to your specific circumstances. Ferraz & Whitmore assumes no liability for actions taken or not taken based on the contents of this material. For advice regarding your particular situation, please contact info@ferrazwhitmore.com.