Until recently the import and export of counterfeit goods to and from Switzerland was prohibited only if these goods were destined for commercial use. Thus the import of counterfeit goods for private use was permissible and such goods could not be seized by the authorities. Seizure of a fake Rolex watch, bought on holiday in Thailand and brought back to Switzerland, was out of the question if there was no indication that the buyer intended to resell the watch.(1)

On July 1 2008 amendments to the Trademark Act entered into force and changed this situation. According to the newly introduced Article 13, Paragraph 2, a trademark owner is entitled to prevent all unauthorized third parties from importing, exporting or transiting counterfeit goods. Thus counterfeit watches and T-shirts bought during holidays may in future get no further than the Swiss customs checkpoint at the airport. Furthermore, the transiting of counterfeit goods is also prohibited by Article 13, Paragraph 2.

However, there are some limitations to the above. Firstly, while the trademark owner may take legal steps against the import, export or transit of counterfeit goods for private use in civil procedures, according to the new Article 65a of the act, such actions are not punishable under criminal law (in contrast to the scenario where such actions are carried out for commercial purposes). The aim is to prevent counterfeit goods from entering the Swiss market, but to avoid criminalizing individuals who may be unaware that they have acquired illegitimate products. Secondly, if the counterfeit goods have been manufactured by an individual for private use, the trademark owner may not intervene. Finally, while the import, export or transit of counterfeit goods for private use is no longer allowed, possession of counterfeit goods for private use within Switzerland remains permissible. This apparent inconsistency appears to be based only on practicality.

The amendments to the act also improve the assistance that trademark owners may request from customs authorities with regard to the import, export or transit of counterfeit goods. As previously, customs authorities have the right to retain suspicious goods. Under Article 72a of the new law, the trademark owner is now entitled not only to inspect the potentially infringing goods on the premises of the customs authorities, but also to ask the customs authorities to send it samples of the goods. However, under Article 72b, Paragraph 3, the customs authorities may refuse to provide these samples if they receive a justified request from the goods owner. 

For further information on this topic please contact Marcel Bircher or Roger Staub at Froriep Renggli by telephone (+41 44 386 6000) or by fax (+41 1 383 6050) or by email ([email protected] or [email protected]).

Endnotes 

(1) Decision of the Swiss Federal Supreme Court 114 IV 6.