Facts
ROLEX SA is a watch manufacturer headquartered in Geneva and the owner of various trademarks registered in the Swiss trademark register. In April 2018, the Federal Customs Administration (FCA) intercepted a shipment from China addressed to [A.] containing eleven allegedly counterfeit watches bearing the "ROLEX" mark. [A.] had previously ordered eleven watches online through the Z. website from a supplier in China.
ROLEX SA subsequently filed a lawsuit against [A.] with the Commercial Court of the Canton of Zurich, seeking, among other things, an injunction and a request for information. The Commercial Court dismissed the lawsuit, as the civil law claims for performance provided for in trademark law could not be brought against the consumer acting for private purposes.
The Federal Supreme Court partially upheld the appeal in civil matters filed by ROLEX SA.
Considerations
The Federal Supreme Court states that even in an act falling under Art. 13 para. 2bis TmPA, because the importation of commercially manufactured goods is for private purposes, the trademark owner has access to the civil law claims for performance under Art. 55 para. 1 TmPA.
Art. 13 para. 2bis TmPA was introduced as part of the 2007 revision of the Patent Act to effectively combat counterfeiting and piracy. The legislator wanted to extend the…