Trademarks in a virtual world: Swiss IP Office publishes its new practice

What happens if you use a trademark in a virtual, rather than a real-world environment? Omar Hassan shares the practical guidelines released in 2024 by the Swiss Federal Institute of Intellectual Property. 

The use of a trademark in a virtual environment and in a real environment is often comparable. That’s why, in some cases, the owners of trademarks registered for physical products or services should benefit from protection against the unauthorised use of their virtual equivalents.  

In 2024, the Swiss Federal Institute of Intellectual Property published its new practice regarding the examination of the similarity between goods/services offered in virtual environments and their real-world equivalents. For example, the similarity between downloadable virtual clothing in class 9 and physical clothing in class 25. 

The new practice not only reflects the marketing and consumption habits that prevail in the economic sectors but also allows for greater harmonisation with the EUIPO. 

Products: Exceptional similarity 

Under the new guidelines, the recognition of a similarity between virtual products and real products will remain the exception. The party claiming a similarity will have to prove the usual character, in the sector in question, of a joint use of real products and their virtual equivalents in marketing or on the market. Such a similarity will only be accepted if the evidence provided demonstrates that the recipients actually perceive the offer as possibly coming from the same company. 

Services: Continuity in the virtual world 

For services with the same purpose and function – whether provided in a real or virtual environment (e.g. training, concert organisation or financial advice) – similarity will be examined based on traditional criteria. Indeed, the place of supply, whether in the real or virtual world, does not alter the nature of the service.  

Likewise, the current practice recognises similarities between various services and certain others falling within classes 35 and 41; for example, travel arrangements (class 39) or catering services (class 43) compared to entertainment services (class 41). According to these criteria, services offered in the real world may be considered as similar to their virtual equivalents falling under the general indications of classes 35 and 41. 

Finally, some services lose their original purpose and function when provided in a virtual environment; in other words, they do not produce the same results as their real-world counterparts. For example, hair cannot be cut in a virtual hair salon. As with products, recognition of similarity in such cases will only be allowed exceptionally and on the basis of evidence. The party concerned will have to demonstrate that it is customary, according to the marketing and consumer habits prevailing in the sector in question, to offer virtual equivalents to real-world services for promotional, entertainment or training purposes. 

Following the introduction of these new practices, our team in Switzerland is keeping a close eye on the decisions of the Swiss IP Office and courts. For questions on similarity issues, particularly in the context of availability searches or oppositions, please don’t hesitate to get in touch. 

Omar Hassan is a Senior IP Lawyer at Novagraaf in Switzerland.