Anti-counterfeiting 2009 – A Global Guide

How ACG tackles the trade in fake goods

The Anti-Counterfeiting Group (ACG) was founded in the United Kingdom in 1980, with 18 initial members, mostly from the automotive industry, which had discovered that they shared a common problem with counterfeit parts. It now represents nearly 200 organizations globally, operating in, or providing specialist advice to, most industries where counterfeiting is an issue.
Ruth Orchard

Anti-counterfeiting in the United States

With developments ranging from the enactment of new legislation at both federal and state level to improved cooperation among brand holders, and an increasing level of awareness about the economic and health risks posed by the trade in counterfeit goods, 2008 was a busy year for anti-counterfeiting crusaders in the United States.
Robert Clayton Barchiesi and Travis Johnson

WCO action against counterfeiting

Counterfeiting has ignorantly been called a ‘victimless’ crime, but this fallacy can no longer be allowed to continue unchallenged. Having just taken up my position as the new secretary general of the World Customs Organization (WCO), I have already nailed my colours to the mast when questioned on counterfeiting and piracy.
Kunio Mikuriya

Fashion

Recent estimates have shown that counterfeiting in Italy generates a turnover of around €7.5 billion. The phenomenon is in continuous evolution and the categories of goods counterfeited expand constantly.
Davide Bresner

Internet distribution

The Internet has become a key component of the distribution network in counterfeit goods, estimated by the International Chamber of Commerce to be worth $600 billion. The low cost of operating online, virtually uninhibited access to a global customer base and low risks attributed to the high levels of anonymity result in ideal conditions for the sale of counterfeit goods over the Internet.
BC Tan

How ACG tackles the trade in fake goods

The Anti-Counterfeiting Group (ACG) was founded in the United Kingdom in 1980, with 18 initial members, mostly from the automotive industry, which had discovered that they shared a common problem with counterfeit parts. It now represents nearly 200 organizations globally, operating in, or providing specialist advice to, most industries where counterfeiting is an issue.
Ruth Orchard

Anti-counterfeiting in the United States – 2008 in review

With developments ranging from the enactment of new legislation at both federal and state level to improved cooperation among brand holders, and an increasing level of awareness about the economic and health risks posed by the trade in counterfeit goods, 2008 was a busy year for anti-counterfeiting crusaders in the United States.
Robert Clayton Barchiesi and Travis Johnson

WCO action against counterfeiting

Counterfeiting has ignorantly been called a ‘victimless’ crime, but this fallacy can no longer be allowed to continue unchallenged. Having just taken up my position as the new secretary general of the World Customs Organization, I have already nailed my colours to the mast when questioned on counterfeiting and piracy.
Kunio Mikuriya

European Union

The latest figures published by the European Commission show that counterfeiting is a growing phenomenon in the EU market. In 2007 EU Customs seized more than 79 million counterfeit and pirated goods and handled more anti-counterfeiting cases than ever before. A total of more than 43,000 cases were dealt with in 2007, up nearly 17% from 2006.
Caroline Casalonga and Karina Dimidjian-Lecomte

Sub-Saharan Africa

In just a few years the People’s Republic of China has become the most aggressive investor in Africa. After the United States, it is the second-biggest investor in the continent and over the next couple of years it is likely to increase its investment far beyond that of any other nation.
Wayne Meiring

Albania

Among others, the following national laws apply in Albania: Law 9947 on Industrial Property (July 7 2008), Law 9902 on Consumer Protection (January 17 2008), Law 9595 on the Central Technical Inspectorate (July 27 2006), Law 8388 on Protection of Topographies of Integrated Circuits (May 13 1999) and the Civil Code (Law 7850, July 29 1994, as amended).
Renata Leka

Austria

A number of statutory instruments provide for anti-counterfeiting measures in Austria. Some of these are based upon EU legislation; others have been harmonized with EU law. The EU Customs Regulation (1383/2003) and the corresponding implementation regulation (1891/2004) standardize border seizure proceedings within the European Union and are thus applicable in Austria.
Alexander Cizek

Bahrain

Various IP rights are recognized, secured, registered, acquired, administered, protected and enforced under various national laws, including Law 11/2006 on Trademarks and Law 1/2004 on Patents and Utility Models, as amended by Law 14/2006.
Sabuktageen Zahoor Khawaja

Belgium

The main civil laws are the Benelux Convention on Intellectual Property of February 25 2005 (Articles 2(20) to 2(22) (trademarks) and Articles 3(16) and 3(17) (designs)), the Copyright Act of June 30 1994 (Articles 1, 35, 39 and 44) and the Patent Act of March 28 1984 (Articles 27 and 52 to 54).
Louis Puts and Barbara Ooms

Bosnia and Herzegovina

The following national laws apply, among others: the Industrial Property Act of Bosnia and Herzegovina (published in the Official Gazette of Bosnia and Herzegovina 3/02) and the Customs Policy Act of Bosnia and Herzegovina (published in the Official Gazette of Bosnia and Herzegovina 57/04, 51/06 and 76/06).
Branko Maric and Anisa Strujic-Tomic

Canada

The Criminal Code and various IP statutes, including the Trademarks Act and Copyright Act, contain provisions that are applicable to counterfeiting. These statutes are discussed in more detail in this chapter.
Cynthia Rowden and Megan Langley Grainger

Chile

The legal framework for the protection of IP rights in Chile consists of several legal instruments, the most important being the Political Constitution of the Nation of 1980. Article 19(25) of the Constitution grants all people “copyright in their intellectual and artistic creations of any kind, for the time stated by the law, which shall not be less than the owner’s lifespan”.
Luis Ignacio Olmedo and Antonio Marinovic

China

The primary sources of law for protecting registered trademarks and unregistered well-known marks against counterfeiting in China include the Trademark Law, the Anti-unfair Competition Law and the Criminal Law.
Grace W Li

Colombia

The core regulation for trademarks in Colombia is Andean Community Decision 486 of 2000 on a Common Industrial Property Regime, supranational legislation applicable in Colombia, Bolivia, Ecuador and Peru. Among other things, this body of rules removed all contradicting internal laws for trademarks.
Emilio Ferrero and Felipe Serrano

Czech Republic

In today’s competitive global marketplace rules are effective only if they are enforced. When a party’s competitors infringe its IP rights or engage in unfair trade practices, that party’s ability to compete effectively is undermined. Under the Czech legal framework, three methods of fighting counterfeit goods are available to the police and Customs.
Martin Holy and Jakub Vyplel

Ecuador

Ecuador has one of the most comprehensive and advanced IP legislative frameworks in the Americas. Passed in 1998, the IP Law covers patents, trademarks, designs, utility models, trade secrets, semiconductor chips, copyrights (with sections dealing with software, digital databases and audiovisual works), neighbouring rights, unfair competition, online infringement and rights protection.
Bernardo Tobar and Alfonso Canales

Egypt

As a civil law country, Egypt’s IP protection and anti-counterfeiting laws are all embodied in codified legislation. The courts apply the legislation with a view to adhering as much as possible to the letter of the law and to the legislature’s intent, as detailed in the explanatory memorandum that is usually published with enacted laws.
Nermien Al-Ali and Robert Mihail

Finland

The substantive laws on IP rights in Finland comply with the relevant standards under EU law and the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). The same applies to the rules on the enforcement of IP rights.
Lauri Rechardt

France

IP regulation is codified within the French IP Code. The code was amended by the Law of October 29 2007 against Infringement (1544/2007), which implemented the EU IP Rights Enforcement Directive (2004/48/EC). The amendment was followed by the application of Decrees 2008-624 and 2008-625 of June 27 2008.
Caroline Casalonga

Greece

The following legislation applies to counterfeiting: the Trademarks Law (2239/1994) (implementing the EU First Trademarks Directive (89/104/EEC)), the EU Community Trademark Regulation (40/94), the Copyright Law (2121/1993), the Unfair Competition Law (146/1914), the Industrial Designs Presidential Decree (259/1997) and the Penal Code.
George A Ballas, Pepy I Ioakimides and George Ch Moukas

Germany

Germany is a signatory to all relevant international IP protection agreements, including the Paris Convention for the Protection of Industrial Property, the Agreement on Trade-Related Aspects of Intellectual Property Rights, the Madrid Agreement and Protocol and the Hague Agreement.
Henning Hartwig

India

Fast-paced liberalization and urbanization in India has led to a rise in counterfeiting activities. Counterfeit goods are flooding the domestic markets in traditional areas such as software, clothing and electronics, as well as pharmaceuticals, food, cosmetics, personal care products and films.
Pravin Anand

Indonesia

Indonesia has long been regarded as the ‘Wild West’ when it comes to the protection of intellectual property. While trademark piracy and copyright and design infringement remain major concerns, the improving legal environment offers a good opportunity for IP rights owners to revisit these issues.
Brett McGuire

Ireland

Pursuant to Statutory Instrument 344/2005, the Irish Revenue Commissioners – in particular, the Customs Division thereof – are the nominated authority responsible for the implementation of the EU Customs Regulation (1383/2003) and Commission Regulation 1891/2004 (as amended by Regulation 1172/2007) in Ireland.
Helen Johnson

Italy

Contrary to common belief, the legislative instruments available in Italy against IP infringement are efficient. The 2005 Code of Industrial Property brought together the principal laws relating to IP matters – with two exceptions.
Cesare Galli

Jamaica

The principal pieces of legislation that address counterfeiting in Jamaica are the Trademarks Act 1999, the Merchandise Marks Act 1888, the Customs Act 1941 and the Fair Competition Act 1993. The law of passing off provides a remedy based entirely on common law.
Joanne E Wood, Jermaine C Spence and Roxanne Miller

Japan

The Japanese Trademark Act protects registered trademarks only. There is no requirement for actual use of the trademark at the time of registration. Japan operates a ‘first to file’ system. The first to file a trademark registration application may obtain through examination by the Japan Patent Office the registration of a trademark over a prior user of the same mark.
Yuriko Kanematsu, Osamu Iwanami and Koichi Nakatani

Jordan

The following national and international laws and conventions, among others, are relevant for IP rights action in Jordan: the Trademark Law 34/1999, the Goods Mark Law 19/1953 and the Trade Secrets and Unfair Competition Law 15/2000.
Fatima Al-Heyari

Kazakhstan

In Kazakhstan, trademarks are protected under the following laws: the Civil Code of the Republic of Kazakhstan; Code 155 of January 30 2001 of the Republic of Kazakhstan on administrative violations; the Criminal Code of the Republic of Kazakhstan of July 16 1997; and Law 456 of July 26 1999 of the Republic of Kazakhstan on trademarks, service marks and appellations of origin.
Yuri A Bolotov and Saule Daniarovna Kulzhambekova

Lebanon

Lebanon is a parliamentary republic and a civil law country. Its legal system is based on substantive and procedural codified laws. The main texts governing trademarks and service marks in Lebanon include the High French Commissioner’s Ordinance 2385/LR of January 17 1924 (Sections 68 to 88 and 105 to 110) and the Penal Code of February 27 1943 (Sections 701 to 721, which are consistent with Ordinance 2385/LR).
Walid Nasser and Pierre El Khoury

Luxembourg

The EU legislation on anti-counterfeiting in force in Luxembourg includes the Customs Regulation (1383/2003), the Customs Implementation Regulation (1891/2004), modified by Regulation 1172/2007, and the IP Rights Enforcement Directive (2004/48/EC).
Guy Arendt, Veronique Hoffeld and Marie-Laure Carat

Mexico

Although a number of international treaties and the Mexican Constitution touch on aspects of anti-counterfeiting law, the main domestic laws are the Industrial Property Law, the Federal Criminal Law, the Copyright Law and the Customs Law.
José I De Santiago

Morocco

Industrial property in Morocco is regulated by the Industrial Property Law (17-97), as amended and supplemented by Law 31-05. Decree 2-00-368 of June 7 2004 sets out the conditions of its implementation.
El Mostafa Aksiman

Netherlands

The relevant legal framework consists of a mix of criminal law and civil law, and comprises EU legislation, national substantive legislation and national procedural legislation. In case of conflict between national and supranational law, the latter always has precedence.
Peter Claassen and Huib Berendschot

New Zealand

New Zealand’s law is historically based on that of the United Kingdom. Accordingly, New Zealand is a common law country where IP rights owners rely on both statutory and common law remedies.
Damian Broadley and Michelle van de Wetering

Pakistan

The relevant statutes in Pakistan relating to trademarks are as follows: the Trademarks Ordinance 2001 (Civil), the Pakistan Penal Code 1860 (Criminal), the Customs Act 1969 and the Drugs Act 1976 (for drugs/pharmaceuticals only).
Farrukh Khan

Paraguay

Paraguay has implemented the following international treaties and agreements, among others, into its domestic legislation: the Paris Convention for the Protection of Industrial Property and the Berne Convention for the Protection of Literary and Artistic Works.
Miguel Almada

Poland

Poland is a signatory to all the major international agreements on IP protection, including the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights. As a member state of the European Union, Poland is also part of the Community trademark and design systems and is obliged to apply national IP law harmonized with EU directives.
Bartosz Krakowiak and Slawomir Mazur

Qatar

Qatar is located on the Arabian Peninsula. It is bordered by Saudi Arabia in the south, and is surrounded by the Persian Gulf on the three other sides. Although Qatar is a small state covering an area of approximately 11,437 square kilometres, with a population of around 1.54 million, it is an oil-rich country with a gross domestic product of $95.130 billion and a per capita income estimated at $86,669, which is the highest in the world.
Essam Shafiq

Romania

The legal framework for the protection and enforcement of IP rights in Romania includes the Law on Trademarks and Geographical Indications (84/1998), the Patent Law (64/1991), the Law on Designs and Models (129/1992) and the Law on Copyright and Related Rights (8/1996).
Dragos Vilau

Saudi Arabia

The main national laws relating to counterfeiting and other IP right infringements include the Commercial Fraud Law (Royal Decree 11/1984), the Trademark Law (Royal Decree 21/2002) and the Patent, Layout Design of Integrated Circuits, Plant Varieties and Industrial Designs Law (Royal Decree 27/2004).
M Salman Khan

South Africa

The Counterfeit Goods Act 37/1997 aims specifically to combat the trade in counterfeit goods. The act was implemented in conjunction with amendments to the Merchandise Marks Act 17/1941, which had hitherto been the principal weapon used to deal with counterfeit goods.
Owen Dean and Mohamed Khader

Switzerland

Counterfeiting and piracy are global phenomena which affect Switzerland. Although it is safe to say that Switzerland is not a centre for the production of counterfeit goods, there has been noticeable growth in trade in such products. In addition, the country is increasingly being used as a transit hub for counterfeit goods between Asia and other regions.
Corsin Blumenthal and Stefan Day

Thailand

Advances in technology have made it easier for counterfeiters to adapt to a changing marketplace more rapidly. IP infringement is a serious challenge to every country’s economic future. Original ideas are at the core of business growth. These intangible assets create jobs, serve as the foundation of economies and shape our children’s future.
Satyapon Sachdecha

Turkey

Turkey has closely followed international developments and has acceded to almost all IP-related international treaties, in particular the Agreement on Trade-Related Aspects of Intellectual Property Rights, which aims to harmonize the legal framework on anti-counterfeiting and anti-piracy among World Trade Organization members.
Ugur Aktekin and Baris Kalayci

Ukraine

Provisions on remedies against counterfeiters are contained in the Civil Code, the Commercial Code, the Criminal Code, the Code on Administrative Infringements and the Customs Code.
Alexander Pakharenko, John Anderson and Natalia MacMaithghon

United Arab Emirates

The United Arab Emirates is a union of seven emirates, namely Abu Dhabi, Dubai, Sharjah, Ajman, Um Ul Quain, Ras Ul Khaimah and Fujerah. The UAE follows a federal judicial system with the exception of the emirates of Dubai and Ras Ul Khaimah.
Sarmad Hasan Manto

United Kingdom

Anti-counterfeiting efforts are principally governed by trademark and customs legislation. Commercial entities seek to protect their brand and products by registering a portfolio of marks, which may consist of Community trademarks, controlled by the Community Trademark Regulation (40/94), and/or national registered marks, governed by the UK Trademarks Act 1994.
Sofia Chen and Ewan Grist

United States

The cornerstone of trademark law in the United States is the Lanham Act (the Trademark Act of 1946, 60 Stat 427 (July 5 1946), codified as amended at 15 USC § 1051 et seq)), which governs all aspects of civil trademark protection and enforcement.
G Roxanne Elings and Scott Gelin

Venezuela

The domestic legislation applicable to anti-counterfeiting comprises, among others, the Criminal Code (Official Gazette 5.494) and the Industrial Property Law (Official Gazette 24.873).
Manuel Antonio Rodriguez and Ricardo Alberto Antequera Hernandez

Directory of anti-counterfeiting service providers