IP office interview: Protecting ‘Swissness’

Counterfeiters are becoming more sophisticated, finding new ways to trick consumers into buying their products online.

Catherine Chammartin, director general of the Swiss Federal Institute of Intellectual Property (IPI), explains the situation: “In the past, if you were at a beach or market it was quite obvious what was counterfeit.

“But with the internet, customers are probably not always aware that what they are ordering is counterfeit. They probably just think ‘well, it’s a good deal, but they aren’t suspicious because the website looks professional’.

“IPI and Stop Piracy, a public-private partnership, try to raise awareness about the issue and give consumers information about what to look for in a website to try and find out if it is legitimate,” she says.

IPI was founded in 1888 and is headquartered in Bern. On January 1, 1996, the office received its present status as an organisation incorporated under public law. The institute is autonomous and has its own legal entity.

Chammartin has been in her current position since November 1, 2015.

“I come from a different area from IP, so it’s not like you’re already in the office and then you get promoted. Because of this, you have a different approach. For me, it was important to first get a good understanding of what the institute does, of why we do things the way we do, etc,” she says.

Before joining IPI, Chammartin worked as a policy adviser at the State Secretariat for International Financial Matters until 2010. Then she worked as head of the exchange of information and individual taxation section at the State Secretariat for International Financial Matters, a role she held from 2011 to 2015.

“When I took over at IPI, I was very lucky to be able to take over an office that is well organised, efficient, has a very good reputation and whose services are recognised and appreciated by stakeholders,” she says.

“This does not sound like much, but I am very happy about the fact that we managed the transition very well and that it did not have any negative impact on how we do our work and how we are appreciated from the stakeholders we work for.”

IPI measures its annual statistics from the middle of the year, and from July 1, 2015 to June 30, 2016 the office “had almost 17,000 trademarks deposited—that’s 5% more than the year before”.

For patents, IPI has a “much lower number (than trademarks): in the last business year we had 1,819 patents deposited in Switzerland”.

“One of the reasons for this is that most of the patents that are actually valid in Switzerland are not deposited in Switzerland, but in Munich at the European Patent Office,” she says.

Changes to come

On the challenges ahead, Chammartin refers to IPI’s status. “It is not just an office where we register patents, trademarks and designs; we’re also responsible for the political aspect in the sense that we develop legislation, negotiate agreements and advise the Federal Council (government) on IP issues.

“One of the big projects we have ongoing is the revision of the Swiss Copyright Act”, she adds.

The Swiss Federal Copyright Act was enacted in October 1992 and entered into force in 1993. The legislation protects copyright and related neighbouring rights, including rights of performing artists, producers and broadcasters. The act was last amended in January 2011.

“A working group was set up three years ago; it made a certain number of recommendations and, based on this, the Federal Council has drafted a revision of the act and put it into public consultation,” Chammartin explains.

After the consultation, IPI received “more than 1,200 feedback submissions, which is a lot”. The content, she says, is also “quite diverse and going in different directions”.

“One of the challenges of the year ahead is to analyse them all and try to find the changes we need to make to the draft proposal. This is in order to move on to the next phase and bring it back to the Federal Council, submit it to parliament and have a chance of getting it approved by parliament.

“The aim of the revision is to improve the anti-piracy measures, especially with regard to online piracy, such as illegal offers of films and movies.

“Another goal is to improve collective management of copyright and to make some amendments to limitations and exceptions to copyright to take into consideration technological developments of the last few years.”

Additionally, the revision will include the Beijing and Marrakesh Treaties, but these are “far less controversial than the other points”.

The Beijing Treaty on Audiovisual Performances was adopted by the World Intellectual Property Organization in June 2012. The Marrakesh Treaty, which aims to help blind people access published works, was adopted in June 2013 and entered into force on September 30 this year.

The second challenge which IPI has to overcome is the overhaul of its IT systems. “We are introducing a new technical process that allows us to go from a paper-based process to an electronic process,” says Chammartin.

This updated system should allow IPI to expand on its e-government services. The organisation should be able to communicate directly with its users through the new system. Users should, for example, be able to make input online in a structured format (as opposed to email, as is the case today).

“The new rules contain very precise criteria and conditions under which a product or service may be labelled as being Swiss

“For example, if users want to amend the register they would have a form on the web and we would be able to examine it and directly take over the data into the register, which at this time is a little bit more complicated for us (as we need to transcribe the data received by email into the register).”

This also means that IPI will have “more efficient processes”, she says.

“The first package has been put in place. Employees are working with it and are very happy about it. Now we are in the process of preparing the next packages to make sure that a larger part of our activities are covered by this new IT system,” Chammartin adds.

‘Swissness’

On January 1, 2017 an amendment of the Trademark Protection Act and the Coat of Arms Protection Act will come into force.

The ‘Swissness’ legislation was adopted by parliament in June 2013 and the Federal Council approved it in September 2015.

On IPI’s website, the legislation has been named ‘Swissness’ and its aim is to strengthen the protection for the ‘Made in Switzerland’ designation and the Swiss cross (found on the country’s flag). The flag is one of only two square sovereign-state flags—the other being the Vatican City’s.

The reason for this new legislation is to prevent “free-riders” from wrongfully using the designated marks for products which have no relationship to Switzerland, according to Chammartin.

She says: “With this legislation we want to strengthen protection in Switzerland and prevent misuse to ensure that customers are not being misled.

“Customers have some expectations about what the product will bring in terms of quality and precision and it is important that they are not deceived in that respect.

“The new rules contain very precise criteria and conditions under which a product or service may be labelled as being Swiss; if you fulfil these criteria you can use it and if you don’t, you’re not supposed to.”

“Businesses don’t have to obtain authorisation; they have to look at the product themselves and make sure that they fulfil the criteria and then use it. Or if they don’t fulfil the criteria, they don’t use it,” Chammartin explains.

Another change to the legislation is that “in the past, the Swiss cross can only be put on services, not goods. In the future you may also put the Swiss cross on goods, if the rules are complied with. In each case, the Swiss cross has to be differentiated from the Swiss Coat of Arms, which is limited to government authorities”.

The Swiss cross and ‘Made in Switzerland’ designations arguably evoke a certain level of quality in consumers’ minds, with famous Swiss brands including Rolex, Breitling and Longines.

Counterfeits, a constant challenge for such luxury brands, are on IPI’s radar. “I looked up the statistics of the Swiss Customs Administration with regard to the number of counterfeits that have been seized over the past few years and the numbers are consistently increasing,” Chammartin says.

“The question is whether we are just getting better at finding them, or are more people buying fakes?

“It is probably a little bit of both: customs authorities have developed more sophisticated risk-based models to better identify shipments. But we also observe with the internet that a lot of people are ordering goods cross-border.”

In July 2008, IPI brought two IP legislative amendments into effect in order to have better protection against counterfeiting and piracy.

This law also enlarged the scope of the Swiss Customs Administration’s powers so that it could be “active” and stop and search commercial and personal packages.

Chammartin says that in the past, customs officers differentiated between private and commercial usage and were only allowed to stop packages that were imported for commercial purposes.

IPI also tries to prevent counterfeiting in Switzerland through cross-border collaboration and the European Union Intellectual Property Office’s Observatory on IP infringement.

“We work closely with them, covering awareness, campaigns and studies about the economic impact of IP infringements on various industries,” she says.

“There has been progress, but this is a fight we will have to continue. Such strong anti-counterfeiting initiatives, coupled with the latest legislative reforms aimed at preventing fakes, are aimed at helping businesses and rights owners ensure that they are getting the best protection in Switzerland.

“Counterfeiters may have become more sophisticated, but IPI is doing its best to ensure that consumers are protected.”