On 1 July 2008 an interesting new provision aimed at combating counterfeit and pirated goods will enter into force in Switzerland.

Article 13 of the Federal Trade Mark Act (FTA) defines the exclusive rights of the trade mark owner. This provision confers to the trade mark owner inter alia the right to prevent others from using the trade mark and to prohibit others from importing or exporting trade marked goods. However, doctrine and jurisprudence always understood this provision not to limit the private use of goods bearing a trade mark. As a result, it was also deemed lawful to buy branded products abroad and to bring them to Switzerland for private use, regardless of their being counterfeits. The Federal Supreme Court confirmed this principle in a decision concerning the importation of a counterfeit Rolex watch. It reasoned that, once the watch had been purchased by a private person for private use, it was withdrawn from the market and represented no risk to the Swiss public.

These considerations were not shared by the Federal Council. In its view it was not certain that products privately purchased abroad would not find their way to the Swiss market. The Federal Council considered that the demand of individuals for counterfeit and pirated products stimulated the offer of such goods. Other than, for instance, in patent law, in trade mark and design law there were no legitimate interests for the use of illegally produced items. These considerations led to an amendment of Article 13 FTA.

From 1 July 2008 onwards the situation will thus change for private importers. Article 13 FTA will be amended by a new paragraph 2bis, which grants to the trade mark owner the additional right to prohibit the import, export or transit of commercially produced goods under registered trade marks if that import, export or transit occurs for private purpose. The customs authorities may retain goods that they suspect to unlawfully bear a trade mark. With the entering into force of the new regulation it will be easier for trade mark owners to remove illegal products from the market because the customs authorities may directly destroy counterfeit and pirated goods as long as no objection is filed. If the goods are found to bear the trade mark unlawfully, the private importer of the goods will have to accept the destruction without compensation. Even if the new regulation does not entail that consumers will be punished, they risk losing their goods at the border crossings.

Corresponding provisions will enter into force in design law.

The new provisions will have a considerable impact on persons travelling into Switzerland. For consumers it is often impossible to control the origin of the goods, in particular if the goods are purchased in markets, second-hand or small stores selling various brands, or at beaches. In such cases consumers risk that their goods be retained at the border and destroyed if later identified to be counterfeit or pirated goods by the trade mark or design right owner.