Abstract
The Internet is causing profound changes in the way commercial channels operate. Nevertheless, notoriety, recognition and anything that serves to catch the attention of the public remain of paramount importance. In that context and considering how easy it is to use digital platforms to resell goods distracted from distribution networks without incurring the costs and expenses meant to support the positioning of the traded goods on the market, the question whether investments made by the various stakeholders should be protected or not is quite acute. This contribution explains how this issue is currently handled by the Swiss legislation and jurisprudence regarding intellectual property law (patents, copyrights, trademarks, designs), unfair competition and antitrust in the context of a policy of alignment to the European Union legislation. The lack of empirical analysis as to the impact of import and price restraints remains in the view of the author, an obstacle in appropriate decision-making regarding issues such as the exhaustion of intellectual property rights. The current trend in Switzerland is to support by all means the parallel import of goods in Switzerland, without consideration for traditional economics and inter-brand competition.
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Notes
- 1.
For a good example of how half-baked values get in the legal debate, see the Swiss Supreme Court decision in Dior of March 24, 1988, ATF 114 II 91, c. 5a p. 104: ‘The fact that this can lead to a loss of prestige for the manufacturer and his selected specialist dealers for luxury articles, in particular because of the so-called “snob effect”, is a consequence of the relative protection and does not justify the charge of unfairness for that very reason’ (our translation).
- 2.
Unions never got very actively involved in this debate, perhaps because they sensed that high prices might be part of full employment and relatively high pay. The main motive is that parallel imports are not a workers’ issue, but rather an additional benefit for the more affluent.
- 3.
That motto nowadays justifies a number of questionable motions and proposals in the Swiss parliament.
- 4.
Federal Act on Trademark Protection dated August 28, 1992, RS 232.11, which entered into force on April 1, 1993 (hereafter the ‘Trademark Act’ or ‘TA’).
- 5.
Federal Act on Copyright dated October 9, 1992, RS 231.1, which entered into force on July 1, 1993, (hereafter the ‘Copyright Act’ or ‘CA’).
- 6.
Article 12 para 1 CA: Where the author has transferred the rights to a copy of a work or has consented to such a transfer, these rights may subsequently be further transferred or the copy otherwise distributed.
- 7.
First Council Directive 89/104 of 21 December 1988 to approximate the laws of the Member States relating to trademarks OJ 1988 L 40, p. 1, Article 7 para 1; and the ECJ decisions based on Article 36 of the Treaty of Rome, ECJ, case 78/70, Deutsche Grammophon GmbH/Metro SB-Grossmärkte & Co KG, ECR 1971, 487; ECJ, case 192/73, Van Zuylen Frères/HAG, ECR 1974, 731; ECJ, case 15/74,Centrafarm BV und Adriaan De Peijper/Sterling Drug Inc., ECR 1974 1147; ECJ, case 16/74, Centrafarm BV/Winthrop BV, ECR 1974 1183; ECJ, case 144/81, Keurkoop BV/Nancy Kean Gifts BV, ECR 1982 2853 (designs), ECJ, case 19/84, Pharmon BV/Hoechst AG, ECR 1985 p. 2281; ECJ, case 35/87, Thetford Corporation and Another/Fiamma SpA and others, ECR 1988 3585 (patents).
- 8.
Federal Act on Patents for Invention dated June 25, 1954, RS 232.14, which entered into force on January 1st, 1956 (hereafter the ‘Patent Act’ or ‘PA’).
- 9.
ATF 86 II 277 dated October 4, 1960, Philips AG vs. Radio-Import GmbH, c. 3g; ATF 105 II 49 dated January 25, 1979, Bosshard Partners Intertrading AG vs. Sunlight AG (OMO), c. 1b), p. 53.
- 10.
F. Perret, Quelques observations sur l’épuisement des droits de propriété intellectuelle: l’arrêt Chanel du Tribunal fédéral du 23 octobre 1996, RSDIE 2/97 p. 267, 288–289.
- 11.
ATF 122 III 469 dated October 23, 1996, Chanel SA Genève and Chanel SA vs. EPA AG (Chanel I).
- 12.
ATF 122 III 469, c. 5d) p. 477.
- 13.
ATF 122 III 469, c. 5f, p. 479, ‘The law thus protects the functions of distinction and indication of source of the mark‘ (our translation).
- 14.
The Swiss Supreme Court was here closing a door opened in its OMO jurisprudence, ATF 105 II 49.
- 15.
ATF 122 III 469, c. 5f), p. 479.
- 16.
Swiss Supreme Court unpublished decision 4C.354/1999 of January 12, 2000 (Chanel IV).
- 17.
ATF 126 III 322, dated July 20, 2000, WIR Bank vs. Grill et alii.
- 18.
ECJ, case C-63/97, Bayerische Motorenwerke AG and BMW Nederland AG vs. Ronald Karel Deenik, ECR 1999 I 905, pt. 56, expressly recognising that exhaustion cannot apply to a service, pt 56.
- 19.
ATF 128 III 146, dated January 30, 2002, Volkswagen AG and Audi AG vs. Garage X AG. Contrary to Article 6 para 1 lit. c of the First Trademark Directive, the Swiss Trademark Act does not contain such an exception under which the use of a trademark to offer a service could find a justification (see First Council Directive 89/104 of 21 December 1998 to approximate the laws of the Member States relating to trade marks, OJ 1989 L 40, p. 1).
- 20.
ATF 124 III 321 Imprafot AG vs Nintendo Co Ltd and Waldmeier AG decided two years after the Chanel I case on trademarks. The case pertained to the non-authorised import and sale into Switzerland by a parallelist of the video game ‘Donkey Kong Land’ against the exclusive rights that Nintendo Co. Ltd had granted to its Swiss distributor.
- 21.
‘In other words, the aim is first and foremost to open the market to other European countries and not to marginalize third countries. On the other hand, national exhaustion is likely to foreclose the Swiss market for copyrighted products, especially with regard to European trading partners. But that would be contrary to what the law-maker wanted’, c. 2b), p. 326 (our translation).
- 22.
As a matter of fact, that conclusion was largely facilitated by the fact that the previous copyright act was based on the principle of international exhaustion; Article 58 para 1 of the previous copyright act.
- 23.
ATF 124 III 321, c. 3, p. 334, ‘Contractual restrictions on transferred distribution rights can therefore justify contractual obligations to the contracting party. They cannot be opposed to third parties to limit exhaustion’ (our translation).
- 24.
ATF 124 III 321, c. 3, p. 334.
- 25.
Article 12 para 1bis CA: ‘Copies of audio-visual works may not be further transferred or rented as long as the author is thereby impaired in exercising his right of performance (Article 10 para. 2 let. c).’ CR PI-Philippin, Article 12 CA, N. 26 et seq.
- 26.
Article 12 para 2 CA: ‘Where the author has transferred the rights to a computer program or has consented to such transfer, such a program may subsequently be used or further transferred.’ CR PI-Cherpillod, Article 10 CA, N. 51.
- 27.
Article 10 para 3 CA: ‘The author of a computer program also has the exclusive rental right.’
- 28.
A. Alberini, Online Exhaustion of IP Rights, Switzerland, in Kilpatrick, Kobel, Këllezi (eds.), LIDC Contributions on Antitrust Law, Intellectual Property and Unfair Competition, Springer, 2016, p. 633 et seq., 638–644.
- 29.
Ibidem, p. 639. Sic! 2/2012, p. 99 et seq., 101, an outcome supported by several scholars in Switzerland.
- 30.
Article 39a CA: ‘1. Effective technological measures for the protection of works and other protected subject-matter may not be circumvented.
2. Effective technological measures in accordance with paragraph 1 means technologies and devices such as access control, copy control, encryption, scrambling and other modification mechanisms that are intended and suitable for preventing or limiting the unauthorised use of works and other subject-matter.
3. It is unlawful to manufacture, import, offer, transfer or otherwise distribute, rent, give for use, and advertise or possess for commercial purposes devices, products or components, or provide services which:
a. are the subject-matter of sales promotion, advertising or marketing with the goal of circumventing effective technological measures;
b. have only a limited commercially significant purpose or use other than the circumvention of effective technological measures;
c. are primarily designed, manufactured, adapted or performed for the purpose of enabling or facilitating the circumvention of effective technological measures.
4. The ban on circumvention may not be enforced against those persons who undertake the circumvention exclusively for legally permitted uses.’
- 31.
Federal Council Message Regarding the Approval of two WIPO Conventions and a Modification of the Copyright Act, FF 2006, p. 3263, 3297: ‘Thus, authors and owners cannot prohibit lawful uses even if they involve circumvention of technical measures’ (our translation).
- 32.
- 33.
Public reports are available online on the few interventions of OTM since creation in 2008: https://www.ige.ch/fr/proteger-votre-pi/droit-dauteur/observatoire-des-mesures-techniques/observatoire-des-mesures-techniques-avant-2018/resultats-des-examens-conduits-par-lomet/examens-conduits-doffice.html.
- 34.
ATF 126 III 129, Kodak SA vs. Jumbo-Markt AG, confirming its previous jurisprudence. The case pertained to Kodak SA’s attempt to prevent imports of Kodak Gold films and dispensable Gold cameras on the basis of a European patent with extension covering Switzerland.
- 35.
A rationale which to our view is quite arguable. If the identification function of a trademark is not affected, why then should exhaustion be international. The answer lies only in the economics or politics and not because of the nature of the right at stake.
- 36.
In copyright the exclusive right granted to the author only covers the appearance whilst in patent, the exclusivity granted to the inventor is more essential (‘existentielle’ in German in the text of the decision), see FN 36 above, c. 6c.
- 37.
ATF 126 III 129, c. 7.
- 38.
FN 39 above, c. 8 dd).
- 39.
FN 39 above, c. 9 a), b).
- 40.
Federal Council Message dated 23 November 2005, regarding the amendment of the Patent Law and the federal decree approving the Treaty on the Law of Patents and the Regulations, FF 2006 1, 110 et seq. and for the proposed text, FF 2006 147. An exception accepted by the Swiss Parliament, FF 2007 4363.
- 41.
Article 9a PatA: ‘1. If the proprietor of the patent has placed patent-protected goods on the market in Switzerland or within the European Economic Area, or consented to their placing on the market in Switzerland or within the European Economic Area, these goods may be imported and used or resold commercially in Switzerland.
2. If he has placed apparatus that can be used with a patent-protected process on the market in Switzerland or within the European Economic Area, or consented to its placing on the market in Switzerland or within the European Economic Area, the first and each subsequent person who acquires the apparatus is entitled to use this process.
3. If the proprietor of the patent has placed patent-protected biological material on the market in Switzerland or within the European Economic Area, or consented to its placing on the market in Switzerland or within the European Economic Area, this material may be imported and propagated in Switzerland, provided this is necessary for its intended use. The material so obtained may not be used for further propagation. Article 35a remains reserved.
4. If the proprietor of the patent has placed patent-protected goods on the market outside the European Economic Area or consented to their placing on the market outside the European Economic Area and if the patent protection for the functional characteristics of the goods is only of subordinate importance, the goods may be imported commercially. Subordinate importance is presumed unless the proprietor of the patent provides prima facie evidence to the contrary.
5. Irrespective of the provisions of paragraphs 1-4, the consent of the proprietor of the patent for the placing on the market of patent-protected goods is reserved if their price in Switzerland or in the country in which they are placed on the market is fixed by the state.’
- 42.
See 3rd report by the Swiss Government: Parallel Imports and Patent Law, Regional exhaustion, a Report by the Swiss Federal Council dated December 2004, p. 10. Also see the 2002 report, Parallel Imports and Patent Law a Report by the Swiss Federal Council dated November 2002, p. 5 and 39, stating that international exhaustion would lead to a growth of the gross domestic product between 0.0% and 0.1%. The main perceived advantage of regional exhaustion over international exhaustion was the absence of detrimental effects on less developed nations in relation to pharmaceuticals.
- 43.
See FN 42 above, Article 9 para 5 PatA, fixed by the State referring to prices set forth by State entity or other agency or entity empowered to do so.
- 44.
OB 2008, 696: ‘But we have that for now and these prices are fixed. The case of Greece is also rightly mentioned, I understand. If the Greeks - the Greek government, the Greek Minister of Health - fix any prices and then buy them into the market and subsequently export those goods to other countries which are then imported into Switzerland, then you can really argue whether it is acceptable that goods may come from a market where there is no competition at all. In such case, the pharmaceutical industry must accept prices which have nothing to do with market prices’ (our translation).
OB 2008, 757: ‘The situation is different when it comes to goods whose prices are determined not by the market but by the state. Here, an exception is justified, since it is not the producers who can fix prices and in particular parallel importers would benefit from parallel imports’ (our translation).
- 45.
Article 27b of the Federal Act on Agriculture of April 29, 1998, OR 910.1.
- 46.
German Bundesgerichtshof decision dated 27.4.2006 ZR 162/03 ‘ex works’, referred to by I. Zuberbühler, Das Patentrechtliche Erschöpfungsregime in Article 9a PatG und Article 278 LwG, sic! 1 2013, p. 3 et seq., p. 6.
- 47.
I. Zuberbühler I. Zuberbühler, Das Patentrechtliche Erschöpfungsregime in Article 9a PatG und Article 278 LwG, sic! 1 2013, and references, p. 7.
- 48.
The title to Article 9a PatA is ‘Exceptions to effects of the patent’.
- 49.
Federal Act on the Protection of Designs of October 5, 2001 (hereafter ‘DesA’), OR 232.12.
- 50.
CR PI-Cherpillod, Article 9 DesA, N. 23.
- 51.
Article 16 para 1, excerpt: ‘The breeder’s right shall not extend to acts concerning any material of the protected variety, or of a variety covered by the provisions of Article 14(5), which has been sold or otherwise marketed by the breeder or with his consent in the territory of the Contracting Party concerned, or any material derived from the said material’, RS 0.232.161, International Union for the Protection of New Varieties of Plants (UPOV) dated December 2, 1961, in its state on July 1, 1981.
- 52.
Federal Act on Cartels and Other Restraints of Competition dated October 6, 1994, RS 251, (hereafter the Cartel Act or ‘CartA’), Art 3 para 2: ‘This Act does not apply to effects on competition that result exclusively from the legislation governing intellectual property. However, import restrictions based on intellectual property rights shall be assessed under this Act.’
- 53.
‘Overriding legal power’ (our translation), ATF 126 III 129, c. 9b.
- 54.
S. Venturi, Propriété intellectuelle et révision de la loi sur les cartels: les importations parallèles sous la loupe, in Walter Stoffel, Roger Zäch, Kartellgesetzrevision 2003, Neuerungen und Folgen, Schulthess, 2004, p. 215, 232.
- 55.
DPC 2016/4 Sport im Pay-TV p. 921, c. 334 p. 959; CR PI-Alberini, Article 3 II N. 48 et seq.
- 56.
DPC 2016/4 c. 334 p. 959; Evaluationsgruppe Kartellgesetz, Studien zu Einzelbestimmungen (Article 3 Abs. 2 KG), para 11. DPC 2006/3 p. 433 (Thalidomid) c. 29: ‘According to the restrictive interpretation of Article 3 (2) CartA and the prevailing opinion, “only intellectual property legislation” means only competitive effects which are based on the actions of the holder of the intellectual property right arising from the respective intellectual property right. Any contractual extension of absolute protection rights falls within the scope of the antitrust law as an additional restriction of competition’ (our translation). See also CR PI-Alberini, Article 3 II N. 59 et seq.
- 57.
DPC 2013/4, Judgement B-506/2010 of the Swiss Federal Administrative Court in the case of Colgate Palmolive (Gaba), c. 3.4, p. 76: ‘The competition effects in question in the present case do not arise directly from the intellectual property legislation, but from the license agreement of 1 February 1982. Therefore, as stated by the lower court and not disputed by the appellant, it is also subject to antitrust scrutiny under Article 3 CartA’ (our translation).
- 58.
DPC 2011/1 p. 96 et seq., c. 110 p. 112, SIX Terminals: ‘The majority of the scholars nowadays consider Article 3 (2) CartA as obsolete and advocates that due consideration be given to the intellectual property aspects in the context of the substantive examination under Articles 5 and 7 CartA’ (our translation). See also c. 109, p. 112, the approach is based on an alleged symbiotic relationship between IP and antitrust.
- 59.
As evidenced by the Swiss Supreme Court Decision ATF 143 II 297, GABA, of June 28, 2016, published on April 21, 2017.
- 60.
See GABA ibidem.
- 61.
ATF 143 II 297, c. 5.2.5, p. 318.
- 62.
N. Birkhäuser, A. Stanchieri, Das Urteil des Bundesgerichts in Sachen Gaba, Jusletter September 11, 2017, N. 5; P. Kobel, Concurrences Review, No3-2017, Article No 84641 pp. 174–176 (Chroniques, Jurisprudences européennes et étrangères); P. Kobel, Un arrêt très attendu en droit des cartels: La décision du Tribunal fédéral dans l’affaire Gaba, Jusletter, June 19, 2017.
- 63.
N. Birkhäuser, A. Stanchieri, Das Urteil des Bundesgerichts in Sachen Gaba, Jusletter September 11, 2017, N. 6.
- 64.
Communication regarding the assessment of vertical agreements, decided by the Competition Commission on June 28, 2010 in its state on May 22, 2017 (hereafter ‘CommVert’).
- 65.
Article 12 para 2 b) CommVert; Para 9 and 21 of the Explanatory Note.
- 66.
DPC 2011/3, 381 et seq., N. 71, Behinderung des Online-Handels, Para 18, 19 Explanatory Note.
- 67.
DPC 2011/3, 381 et seq., N. 74, Behinderung des Online-Handels, Article 12 para 2 b) CommVert, Para 18, 20 Explanatory Note. On the CommVert and the Explanatory Note, see P. Kobel, Communication sur les accords verticaux-Lignes directrices de la ComCo, Concurrences No 3-2017; A. Graber Cardinaux, Die Aktualisierte Vertikalbekanntmachung 2010 und ihre Erläuterungen im Lichte des Gaba-Urteils des Bundesgerichts, sic!10/2017, p. 579 et seq.
- 68.
These restrictions do not constitute a restriction of customers, within the meaning of Article 12 para 2 lit. b CommVert (Regulation 330/2010, Article 4(b)), or a restriction of passive sales to end users, within the meaning of Article 12 para 2 lit. c CommVert (Regulation 330/2010, Article 4(c)); Explanatory Note issued by the Competition Commission pertaining to the Communication regarding the assessment of vertical agreements, dated June 12, 2017, in its state on April 9, 2018, para 24. A. Graber Cardinaux, Die Aktualisierte Vertikalbekanntmachung 2010 und ihre Erläuterungen im Lichte des Gaba-Urteils des Bundesgerichts, sic!10/2017, p. 579 et seq, p. 587.
- 69.
CJEU, case C-230/16, Coty Germany GmbH vs. Parfümerie Akzente GmbH, ECLI:EU:C:2017:941, pt 36.
- 70.
Trademarks: ATF 122 III 469, c. 7, p. 482 et seq., ATF 114 II 91 c. 4b p. 101 et seq. Copyrights: ATF 124 III 321, c. 4 p. 334 et seq.
- 71.
Act against Unfair Competition dated December 19, 1986, RS 241 (hereafter ‘the Unfair Competition Act’ or ‘UCA’).
- 72.
ATF 122 III 469, c. 7 p. 482, c. 10 p. 485.
- 73.
Ibidem.
- 74.
ATF 122 III 469, c. 9a: ‘According to the functional approach, the distinction between fair and unfair competition must take into account the results that are expected in a system where competition works well. Thus, an act of competition becomes unfair when it jeopardizes the competition as such or when it foils the results expected by said competition’ (our translation).
- 75.
ATF 122 III 469, c. 10b): ‘The notion of prestige to which large perfumers like Chanel are attached implies relatively high prices and retail presentations of a certain standard in necessarily limited numbers. The selective distribution system therefore does not tend to sell branded products in the largest number of outlets and at the best possible price (...). On the contrary, thanks to parallel imports, luxury perfumes are more easily accessible to a larger number of consumers. It is doubtful therefore that a sealed selective distribution system is desirable in the field of perfumery from the point of view of market policy’ (our translation).
- 76.
ATF 135 III 446, c. 6.1, 6.6 and 7, a combined application which invites liberties with the strict conditions posed in the specific provisions of the UCA such as Article 3 lit. e UCA and 5 lit c UCA.
- 77.
Article 5 lit. c UCA: ‘Is acting unfairly the one who adopts without corresponding sacrifice, using technical reproduction means, the work product of a third party which is ready for marketing, and offers it without change’; Article 5 lit. b UCA: ‘Is acting unfairly the one who takes advantage of the work of a third party such as offers, calculations, drawings, although he/she knows such work to have been handed over to him/her or made accessible, unduly’ (our translation).
- 78.
Art 3 lit. e UCA: ‘Is acting unfairly, the one who compares in an inaccurate, fallacious, uselessly offending or parasitic manner, its person, goods, works, services or prices with those of a competitor or who through such comparisons favours third parties against their competitors’ (our translation). A provision that was applied in relation to similar packaging under the idea of exploitation of the reputation (‘Rufausbeutung’) and which currently is only applied to the name, label, packaging and conditioning of products, ATF 135 III 446, c. 7.1. Our suggestion is to argue that what is compared is the service consisting in offering the goods for sale.
- 79.
ATF 131 III 384 (Such Spider).
- 80.
Decision by the Cantonal Court of Fribourg dated August 22, 2016 and partly published in sic! 4/2017, p. 228 et seq. One specific element which does not appear in the published excerpts is that after the filing of the claim, the respondent unilaterally renounced to the poaching of data from the claimant’s web site and then failed to provide a defence leading to a default judgment.
- 81.
Unpublished decision by the Geneva Court of Justice dated March 10, 2017, ACJC/275/2017.
- 82.
In substance, the Unfair Competition Act does not protect the provision of services or benefits itself but the fairness of the practices at stake, ATF 131 III 384 (Such Spider), where the Swiss Supreme Court stated in relation to the general clause in c. 5.2: ‘However, parasitic competition is unfair because one lets a competitor work for himself who then uses his power to immediately reach a successful outcome’ (our translation).
- 83.
Swiss Supreme Court decision dated January 22, 2015, 9C_540/2014, c. 4.1: ‘The party who incorporates general conditions in his contract must indeed expect his inexperienced contractual partner not to adhere to an unusual clause, i.e. a clause which substantially modifies the nature of the contract or that significantly comes out of the usual legal framework for such type of contract”. Such clauses are thus without effect, see ATF 133 III 607, c. 2.2 p. 610. CR LCD-Pichonnaz, Article 8, L. Bieri, Le contrôle judiciaire des conditions générales- Réflexions sur le nouvel article 8 LCD, in F. Bohnet, (ed), Le nouveau droit des conditions générales et pratiques commerciales déloyales, CEMAJ, 2012, p. 48 et seq.
- 84.
Swiss Supreme Court decision dated July 15, 2014, 4A_475/2013, c. 5.1: ‘However, the unusual rule applies only if, in addition to the subjective presumption of absence of industry experience, the clause objectively assessed has a content which is unusual with respect to the type of transaction’ (our translation).
- 85.
Except for a Supreme Court case regarding the transitional provisions ATF 140 III 404.
- 86.
Council Directive 93/13 of 5 April 1993 on unfair terms in consumer contracts, OJ 1993 L 95, p. 29. See Y. Benhamou, L. Tran, Circulation des biens numériques: de la commercialisation à la portabilité, sic! 11/2016, p. 571, 581; CR LCD-Pichonnaz, Article 8 N. 152; contra, N. Kuonen, Le contrôle des conditions générales: l’envol manqué du phénix, SJ 2014 II p. 3.
- 87.
However, such terms cannot defeat exhaustion, see p. 5–6 above.
- 88.
J. Kohler, Handbuch des deutschen Patentrechts, Mannheim 1900, p. 455, referred to by D. Graz, Propriété intellectuelle et libre circulation des marchandises, Droz, Geneva, 1988, p. 62, and F. Perret, Quelques observations sur l’épuisement des droits de propriété intellectuelle: l’arrêt Chanel du Tribunal fédéral du 23 octobre 1996, RSDIE 2/97 p. 267, p.281.
- 89.
D. Graz, Propriété intellectuelle et libre circulation des marchandises, Droz, Geneva, 1988, p. 63 et seq., in particular 67.
- 90.
On these questions, see J. Xoudis, Les accords de distribution au regard du droit de la concurrence, Schulthess, 2002, p. 9 et seq.
- 91.
E. Iacobucci, R. A. Winter, European Law on Selective Distribution and Internet Sales: An Economic Perspective, Antitrust Law Journal, Vol. 81 Issue 1, 2016, p 47 et seq., 52.
- 92.
See NERA Report on the Economic Consequences of the Choice of Regime of Exhaustion in the Area of Trademarks, Executive Summary, dated 8 February 1999, p. 5, http://ec.europa.eu/internal_market/indprop/docs/tm/summary_en.pdf.
- 93.
Ibidem, p. 53.
- 94.
As many authors do for instance, U. Nordmann-Zimmermann, Importations parallèles et droit des marques, in Conflit entre importations parallèles et propriété intellectuelle, Comparativa, Droz, 1996, p. 11, M. Bieri-Gut, Parallelimport und Immaterialgüterrechte nach schweizerischen Spezialgesetzen und dem Recht der EU, AJP/PJA 5/96, p. 559, 560.; In Switzerland that definition was inspired by a decision made by the Commerce Court of Saint Gallen on June 29, 1994, RSPI 1995 I p. 127. A plain and more correct definition was provided by the Swiss Federal Government in its Report of June 22, 2016 regarding Impediments to Parallel Import, p. 5, ‘parallel imports means imports of goods bypassing the distribution structure planned or organized by the manufacturer’ (our translation).
- 95.
See NERA Report, Executive Summary p. 7: ‘The economic case for extending to international exhaustion is simply stated and rests on the proposition that this will deliver lower prices to consumers.’
- 96.
N. Petit, The Economics of Parallel Trade: Iconoclast Views on a Dogma of EU Competition Law, in Inge Govaere, Reinhard Quick, Marco Bronckers Ed., Trade and Competition Law in the EU and Beyond, EE, Cheltenham, 2011, p. 332 et seq.
- 97.
However, even in sectors where parallel trade may be expected as a result of the introduction of international exhaustion, the positive impact on prices estimated by NERA remain quite low. See NERA Report, Executive Summary Exhibit 1.
- 98.
NERA Report p. 11.
- 99.
Third Report of the Swiss Federal Council, Parallel Import and Patent Law: Regional exhaustion, a Report by the Federal Council dated December 3, 2004, p. 28.
- 100.
First Report by the Swiss Federal Council, Parallel Import and Patent Law, a Report by the Federal Council dated May 8, 2000, pp. 11–13. P. 15: ‘In particular, it is difficult to assess to what extent a change in favor of international exhaustion in the field of patent law in Switzerland would actually lead to lower prices’ (our translation).
- 101.
See the studies quoted by N. Petit, above FN, p. 333 et seq.
- 102.
Third Report by the Swiss Federal Council, p. 10–11.
- 103.
D. J. Hemel, L. L. Ouellette, Trade and Trade-offs: The Case of International Exhaustion, Columbia Law Review Sidebar, Vol. 116, April 13, 2016, pp. 17–31.
- 104.
Second Report by the Swiss Federal Council, Parallel Imports and Patent Law, a Report by the Federal Council, November 2002, p. 5, 10 and 39.
- 105.
D. E. Kraus, Les importations parallèles de produits brevets, CEJE, 2004, p. 107.
- 106.
Article 7 TRIPS: ‘The protection and enforcement of intellectual property rights should contribute to the promotion of technological innovation and to the transfer and dissemination of technology, to the mutual advantage of producers and users of technological knowledge and in a manner conducive to social and economic welfare, and to a balance of rights and obligations.’
- 107.
Article 8 para 2 TRIPS: ‘Appropriate measures, provided that they are consistent with the provisions of this Agreement, may be needed to prevent the abuse of intellectual property rights by right holders or the resort to practices which unreasonably restrain trade or adversely affect the international transfer of technology.’
- 108.
Article 40 para 2 TRIPS.
- 109.
Article 4 TRIPS.
- 110.
D. E. Kraus, Les importations parallèles de produits brevets, CEJE, 2004, p. 115.
- 111.
Ibidem, p. 116–117.
- 112.
Ch. Heath, Parallel Imports and International Trade, p. 9 http://www.wipo.int/edocs/mdocs/sme/en/atrip_gva_99/atrip_gva_99_6.pdf.
- 113.
This is an aspect of the question of exhaustion that is insufficiently studied, probably because at the time of the closing of the Marrakesh round of negotiation and the beginning of the XXIst century, the main focus was on antitrust (for instance Kraus, ibidem, is not examining the question of unfair competition but mainly antitrust, pp. 152–158. Unfair competition is raised only as pArticle of Article XX d) exception to GATT, p. 196).
- 114.
Th. Cottier, M. Stucki, Paralleimporte Im Patent-, Uhrheber-, und Muster- und Modellrecht aus Europarechtlicher und Völkerrechtlicher Sicht, Comparativa, 1996, pp. 29 et seq., 51; Th. Cottier, R. Liechti-McKee, Die international Erschöpfung im Patentrecht, in Festschrift für Roland von Büren, Helbing, 2009, p. 325, 331, actually in very sketchy terms: ‘prohibition of parallel imports is a restriction akin to quantitative restrictions’.
- 115.
‘The doctrine of national or regional exhaustion is an outdated concept which no longer can be legitimately sustained whilst other areas of competition law are fully operating under different concepts of territoriality’, Th. Cottier, The WTO System and Exhaustion of Rights, in F. Abbott, Th. Cottier, F. Gurry, The International Intellectual Property System: Commentary and Materials, PArticle two, Kluwer, 1999, p. 1796, 1804. See also D. E. Kraus, Les importations parallèles de produits brevets en Suisse: Ce qu’il faut, c’est moins de dogmatisme, sic! 12/2003, p. 945, 946.
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See Chapter 14 of the 2004 Free trade agreement between the USA and Australia in relation to competition law matters which adds up to the existing agreements on cooperation in antitrust, Chapter 16 for electronic commerce and 17 for intellectual property rights https://ustr.gov/sites/default/files/uploads/agreements/fta/australia/asset_upload_file148_5168.pdf In relation to copyrights, the FTA includes provisions restricting the right of importers to circumvent effective technological measures protecting performance rights and fighting removal of rights management information. Article 17.9 para 4 regarding patents reads as follows: ‘Each Party shall provide that the exclusive right of the patent owner to prevent importation of a patented product, or a product that results from a patented process, without the consent of the patent owner shall not be limited by the sale or distribution of that product outside its territory, at least where the patentee has placed restrictions on importation by contract or other means.’
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Kobel, P. (2019). Switzerland. In: Këllezi, P., Kilpatrick, B., Kobel, P. (eds) Liability for Antitrust Law Infringements & Protection of IP Rights in Distribution. LIDC Contributions on Antitrust Law, Intellectual Property and Unfair Competition. Springer, Cham. https://doi.org/10.1007/978-3-030-17550-4_25
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