Anti-counterfeiting 2016 – A Global Guide
A practical, country-by-country analysis of anti-counterfeiting procedure written by the world's leading firms.
Over the past five years the drive for a more evidence-based policy has increased and the determination of governments to obtain more robust facts and figures shows no sign of subsiding.
ICC/BASCAP has developed a set of 25 Best Practices for IP Rights Enforcement (BASCAP 25), to provide a set of common elements which should be included in any effective IP enforcement regime.
While the online distribution of counterfeit and pirated goods continues to expand at a rapid pace, the legal tools available to rights holders to combat this illicit trade remain limited. This is particularly true in terms of the statutory tools available, as legislation continues to lag far behind the evolving counterfeiting situation.
Travis D Johnson
The level of awareness and concern about counterfeiting among rights holders, trade organisations and government officials has risen, yet the problem continues to grow.
The 2015 Situation Report on Counterfeiting in the European Union, prepared by Europol and the Office for Harmonisation in the Internal Market, provides an alarming account of the tactics used by criminal organisations to avoid detection.
Globalisation has added significant complexities to international trade and global supply chains. In this environment, customs authorities across the world have a unique role in achieving balance between regulation and trade facilitation.
Protecting products against counterfeiting has become an increasingly important issue for rights holders around the world. Filing and maintaining an umbrella of registered rights is only the first step towards protecting a company’s IP rights.
There are significant barriers to following the money trail as it wanders into territories with less developed laws on counterfeiting.
This chapter outlines a series of economic studies and reports on counterfeiting, and explains how such data reshapes the strategies of both rights holders and government anti-counterfeiting agencies.
Online counterfeiters rely on a number of intermediaries to provide their services. These intermediaries are central to developing an effective online enforcement strategy.
Simon Baggs, Rachel Alexander and Helen Saunders
While new gTLDs represent a significant opportunity for some brand owners, there is a considerable risk of increased abuse and related customer confusion.
The requirement that the packaging of certain products be plain, in order to highlight any warning placed on them, may carry more drawbacks than benefits for both the businesses that sell the goods and their consumers.
James Donoian and Margarita Wallach
Social media has both directly and indirectly fuelled the problem of counterfeiting for many global brands – and this problem shows no signs of abating.
Haydn Simpson and Stuart Fuller
Counterfeiting, piracy and IP infringement have assumed epidemic proportions, largely due to technological advances and globalisation.
Justin E Pierce, Marcella Ballard and Thai X Nguyen
The recently revised EU Customs Regulation is the most cost-efficient and strongest tool to fight counterfeiting, given the investigative powers of customs authorities throughout the European Union.
Florian Schwab, Rudolf Böckenholt and Volker Schmitz-Fohrmann
With a population of more than 20 million divided among seven jurisdictions, the Western Balkans has the potential to be a fertile ground for the production and distribution of counterfeit goods.
Vladimir Marenovic, Vera Davidovic and Nikola Kliska
The latest statistics for 2014 show that, thanks to increased information campaigns launched by Austrian Customs, the number of seizures and detentions of counterfeit goods – following a historical peak of 3,201 in 2011 – dropped to 2,344 in 2012, 1,894 in 2013 and further down to 1,293 in 2014.
Belgium is a member state of the European Union, where goods can move freely in the internal market. Hence, border measures mainly target goods entering Belgium from outside the European Union or European Economic Area.
Thibaut D’hulst and Eléonore Waterkeyn
The growth of the Brazilian market and economy is paralleled by the increase in counterfeiting activities.
Elisabeth Kasznar Fekete, Gabriel F Leonardos and Rafael Lacaz Amaral
On January 1 2015 the border enforcement provisions within the Combating Counterfeit Products Act came into force. The act amends the Trademarks Act, the Copyright Act, the Criminal Code and other acts as regards their treatment of the commercial trade in counterfeit goods and pirated works.
Lorne M Lipkus, Georgina Starkman Danzig and David S Lipkus
China’s large population and vast manufacturing base present both opportunities and heightened risks for rights holders, including those not currently distributing their products or services in the country. These risks arise from certain characteristics of the Chinese trademark system.
Dan Plane and Scott Livingston
France is a signatory to all major international agreements in the IP field, such as the Paris Convention, the Berne Convention, the Agreement on Trade-Related Aspects of IP Rights and all substantive and procedural agreements dealing with patent, trademark and copyright law.
Julien Fréneaux, Viviane Azard and Rebecca Delorey
Germany is part of the Community trademark and design systems. Thus, the EU Community Trademark Regulation (207/2009), as amended by EU Regulation 2015/2424, and the EU Community Designs Regulation (6/2002) apply directly to protect Community trademarks and registered and unregistered Community designs in Germany.
Sandra Müller and Thorsten A Wieland
Seizures and detentions of counterfeit goods continued to be significant in Greece in 2015, with a significant increase in counterfeiting activity with regard to cigarettes and spirits.
India continues to adopt strict measures to address counterfeiting and piracy, both of which have increased in India’s growing economy. The most noticeable efforts have come from the pro-rights holder Indian judiciary.
Saif Khan and Shobhit Agarwal
It is possible, although not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs.
Nachman Cohen-Zedek, Dor Cohen-Zedek and Yossi Markovich
Contrary to common belief, the Italian legislative instruments against IP infringement are quite efficient.
Lebanon is a parliamentary republic and a civil law jurisdiction. Its legal system is based on substantive and procedural codified laws.
Malaysia’s efforts in fighting piracy and counterfeit goods – which include improved legislation and enforcement, especially for software piracy – have won it praise. Nevertheless, more still needs to be done.
Karen Abraham and Janet Toh
Officers at Mexico’s 49 customs offices inspect the contents of containers with Mexico as their final destination in order to detect counterfeit merchandise. Because the authorities cannot commence proceedings against counterfeit goods, rights holders must file corresponding legal actions in order to obtain the seizure of illegal goods.
Juan Carlos Amaro
Nigeria has a population of 170 million that largely comprises exposed and sophisticated people who – conversely – have low purchasing power. Consequently, it is a popular destination for counterfeit and pirated goods.
With regard to customs surveillance and border control, Norwegian legislation (through the Customs Act) differs somewhat from that of the European Union.
Trine Greaker Herzog and Cecilie Berglund
Decree-Law 1092/2008 enables the National Superintendence of Customs and Tax Administration (SUNAT) to act in regard to IP rights. The decree-law applies when it is presumed that goods intended for export, import or transit are pirated (infringing copyright or a related right) or counterfeit (infringing a trademark).
Maria Del Carmen Arana Courrejolles
Any rights holder that is concerned about imports or exports of infringing goods should record its IP rights with Customs by submitting an application for action. This is one of the most effective and affordable ways to combat counterfeit goods at the border.
Tomasz Grucelski and Patrycja Cielenkiewicz
Customs proceedings and actions have become relatively effective means of blocking counterfeit products from entering the Romanian market, as Customs has started to take a proactive role in enforcing IP rights at the national borders.
Dragos M Vilau
The following national laws apply to counterfeiting: the Civil Code; the Criminal Code; the Code on Administrative Offences; the Law on Customs Regulation; and the Competition Law.
Vladimir Biriulin and Olga Yashina
Turkey is a party to most international IP-related treaties, including the Agreement on Trade-Related Aspects of Intellectual Property Rights, which aims to harmonise the legal framework for anti-counterfeiting and anti-piracy.
Barış Kalaycı, Zeynep Seda Alhas and Ali Bozoğlu
Provisions on remedies against counterfeiters are set out in: the Civil Code; the Commercial Code; the Criminal Code; the Code on Administrative Infringements; and the Customs Code.
Alexander Pakharenko, Natalia Stetsenko and John Anderson
In recent years the United Arab Emirates has amended some of its laws and policies, as well as the internal regulations of many of its government departments, to attract more investment and safeguard the rights of investors.
The Trademarks Act 1994 sets out the law on infringement of UK registered trademarks, providing civil remedies as well as criminal penalties in some instances.
Sarah Wright, Anoushka Sandry and Joel Vertes
Although many states have their own laws imposing civil and criminal penalties for counterfeiting, most anti-counterfeiting actions in the United States apply federal law.
Steven J Wadyka Jr, Cameron M Nelson and Jeff Joyner
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