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I wrote software (as a hobby) a while ago and also registered a trademark for it. I thought about trying to commercialize the software, and realized that in order to limit my risks it makes sense to found a Ltd (actually the Swiss version which is a GmbH). There are no other people involved in my GmbH (no co-owners, no-co-founders, no employees, no investors).

Can I own the software and trademark privately, and license both to my GmbH? I would do this exclusively and for a symbolic amount of money. The GmbH would sell the software under the trademark, and I would get the money as dividends. The point is to keep the GmbH just as lean and simple as possible, not e.g. about any tax reduction schemes.

I am considering an exclusive free license agreement based on some standard template. I would sign as Licensor (me as private person) and also as Licensee (me as representative/CEO of my GmbH).

What does the law say about such a setup? Can the same person sign both sides of a contract?

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  • Sorry, but this is asking for legal advice ("what should I do?") rather than being a question about what the law says. You should talk to a lawyer, or edit this question to make it about a specific bit of the law (e.g. "can I sign both sides of the contract?")
    – Paul Johnson
    Dec 16, 2020 at 10:34
  • I edited in order to be more specific.
    – UweD
    Dec 16, 2020 at 12:23
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    If your company goes bankrupt, it's assets would go to the people it owes money to. The license would be an asset of your company. If nobody else wants it, I might be able to buy your company's assets very cheaply, and have that license.
    – gnasher729
    Jun 4, 2021 at 9:33
  • @gnasher729 What if it is a temporary license, say for one year, with the option to be renewed? On the other hand, if the company goes bankrupt, the software would be gone anyway, also if the company would own it, right?
    – UweD
    Jun 4, 2021 at 10:16

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I did some research and found the information below. It took me a while to figure out that the issue is known in German as "Insichgeschäft". The quotes below are translations from Wikipedia.

The term self-dealing is also used in Switzerland. It is regulated in Art. 32 ff. OR.

The Federal Supreme Court has consistently ruled that self-contracting is fundamentally inadmissible because it “regularly leads to conflicts of interest and is therefore not covered by the company's purpose”. The contracting of the agent with himself should only be able to develop legal effects in exceptional cases, in particular if either the risk of the person represented being disadvantaged due to the nature of the legal transaction is excluded (e.g. "purchase of goods with clearly defined market or stock exchange prices"), or if the representative "specifically authorizes the representative to conclude a contract with himself, which in certain circumstances can also be tacit or approve the transaction retrospectively".

Now since I am the owner of the business and my company would get a free exclusive license, I assume that the above mentioned exceptional case is valid:

However, the risk of discrimination (and thus also the obligation to obtain approval from a higher-level or subsidiary body) does not apply if there are no other shareholders in the AG in addition to the body that has concluded self-contracting. The Federal Supreme Court has rejected the additional requirement that, in addition to the absence of further shareholders, there must also be no corporate creditors. Sole shareholders are therefore free to enter into individual deals.

Therefore, such a contract should be legally ok.

Finally, to be considered:

As part of the reform of the GmbH, the company law (Art. 718b OR), the GmbH law (Art. 814 Para. 4 OR) and the cooperative law (Art. 899a OR) introduced the requirement of written form for contracts that the representative of the company concludes with himself, with the exception of contracts which do not exceed CHF 1,000.

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