Anti-counterfeiting: A Global Guide 2017
A practical, country-by-country analysis of anti-counterfeiting procedure written by the world's leading firms.
The political landscape in the United Kingdom, Europe and across the globe changed greatly in 2016 and many leading commentators believe that in 2017 the world will become even more unpredictable. In Europe, one of the main uncertainties is how UK and EU politicians will act as they seek to negotiate in preparation for the United Kingdom’s exit from the European Union.
Counterfeiting and piracy are pervasive across countries and sectors, representing a multibillion-dollar illegal industry that creates a significant drain on the global economy – crowding out billions in legitimate economic activity and facilitating an underground economy that deprives governments of revenues for vital public services, forces higher burdens on taxpayers, dislocates hundreds of thousands of legitimate jobs and exposes consumers to dangerous and ineffective products.
Anti-counterfeiting work includes many players – rights holders, customs officials, law enforcement, legislators, IP offices, intermediaries and consumers. In order to effectively enforce against counterfeiting, the International Trademark Association navigates this puzzling issue by connecting the different players together, one piece at a time, to get the big picture.
The issues of original equipment manufacturing for export, bad-faith trademark registration and transparency in public prosecution of IP crime will also remain high priorities for the Quality Brands Protection Committee until the progress made through the efforts of the judiciary, procuratorate and other stakeholders becomes consistent general and judicial practice.
Fakes – whether fake news or fake goods – are currently a popular subject of debate and a cause of irritation. However, in most cases the problems are discussed with no real knowledge of their actual extent. In order to take concrete steps to overcome the issues that counterfeiting presents, it is first necessary to understand the full scope of the phenomenon.
Udo Pfleghar and Steffen Schäffner
Despite efforts to identify the optimal legal framework and most efficient strategies to combat counterfeiting, it remains a constant problem worldwide. Concerns are expressed at all levels – from governments to international organisations and individual stakeholders – and are centred on the need to establish a healthy and secure market for consumers, ensure the protection of legitimate trade and promote competition.
Michalis Kosmopoulos and Adrian Roseti
Since the early days of couture on the catwalk, the fashion industry has been a target for counterfeiters and copycats. While criminals were previously restricted to selling their fake goods on the streets, the Internet has completely transformed their operations. Not only are they now offered many platforms to trade on, but they have also increased their audience and the speed at which they can sell.
Helen Saunders and Dilpreet Kaur
Counterfeiting is an issue that brands in all industries are contending with – from pharmaceuticals, electronics and beauty products to luxury fashion and apparel and toys. The consequences of fake goods flooding the market can have an impact on many areas of the business, including the bottom line, reputation and customer satisfaction. In some instances, the impact extends well beyond economics and affects the health and wellbeing of consumers.
The transition of the IANA functions from the US government to ICANN triggered a comprehensive review of many of ICANN’s services. While these do not have a serious impact on the everyday use of the Internet, they do have consequences for the services available to brand owners to combat counterfeiting and cybersquatting.
Jennifer Itzkoff and James H Donoian
“Fake and dangerous food and drink threaten the health and safety of people around the world who are often unsuspectingly buying these potentially very dangerous goods.” These are the words of Michael Ellis, head of INTERPOL’s Trafficking in Illicit Goods Unit, commenting on Operation Opsen V, which saw the seizure of more than 10,000 tons and 1 million litres of hazardous fake food and drink. This brings home the stark reality of the burgeoning trade in counterfeit and fraudulent food and drink.
As a single market composed of 28 member states with 500 million consumers, the European Union is a highly attractive business market – and a prime target for counterfeiters. The 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 2015 show that the number of seizures and detentions of counterfeit goods – following consecutive drops since 2012 down to 1,293 in 2014, thanks to increased information campaigns launched by Austrian Customs – rose again, doubling to 2,771. However, the number of articles seized dropped from 195,689 in 2014 to 44,832 in 2015.
Belgium is a party to all major international agreements in the IP field, including the Paris Convention, the Berne Convention and the Agreement on Trade-Related Aspects of Intellectual Property Rights. In addition, the main substantive IP laws applicable in Belgium are contained in national laws, EU regulations and a Benelux convention.
Thibaut D’hulst and Eléonore Waterkeyn
The growth of the Brazilian market and economy is paralleled by the increase in counterfeiting activities. The enforcement of IP rights involves planning, technology, intelligence, training and coordination, with support from a number of laws and treaties, as well as the relevant rules of the Federal Constitution, the Civil Code, the Criminal Code, the Civil Procedure Code, the Criminal Procedure Code and administrative statutory instruments.
Elisabeth Kasznar Fekete, Gabriel F Leonardos and Rafael Lacaz Amaral
On October 30 2016 Canada and the European Union signed the Comprehensive Economic and Trade Agreement (CETA) and Bill C-30 (the domestic implementation legislation) was introduced the following day. Ratification is expected in the near future. CETA brings significant changes to Canada’s trademark and patent laws.
Lorne M Lipkus, Georgina Starkman Danzig and David S Lipkus
Counterfeiters are increasingly using Chilean ports to enter Latin America. Chile is one of the most stable and strongest economies in the region, and has signed several free trade agreements with prominent players in global commerce. In addition, the country’s geography (bordering the Pacific Ocean) makes it an attractive gateway to the continent for products manufactured in Asia. The ports of San Antonio, Valparaiso and Iquique are the most common entry points for counterfeit goods.
Andrés Grunewaldt Cabrera
China’s large manufacturing base and inconsistent IP enforcement have long made it one of the primary sources of global counterfeit and knock-off goods. In 2015 China’s official Xinhua news agency estimated that over $45 billion in fakes were available on Alibaba’s various e-commerce websites. That same year, US customs statistics indicated that 88% of fake goods seized in the United States (by value) originated in China.
Dan Plane and Scott Livingston
Germany is part of the EU trademark and design systems. Thus, the EU Trademark Regulation (207/2009), as amended by EU Regulation 2015/2424, and the EU Community Designs Regulation (6/2002) apply directly to protect EU 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 2016. Following on from the imposition of special consumption taxes on alcohol, tobacco and petrol a couple of years ago, there has been a significant increase in counterfeiting activity with regard to cigarettes and spirits.
The Trademarks Act provides for the registration of trademarks by both Indian and foreign nationals. It expressly provides statutory remedies of a civil and criminal nature against the infringement of a registered trademark. The act also recognises the right of an unregistered trademark owner to take action for passing off, even against a registered trademark, provided that the unregistered trademark owner is a prior user.
Saif Khan and Shobhit Agrawal
According to the Customs Ordinance, Customs is entitled to detain imported goods that are suspected of infringing trademarks. It is possible, although not mandatory, for rights holders to file a complaint while recording their registered trademarks with Customs. It is highly recommended that such a complaint be filed if the rights holder is aware of specific shipments of infringing goods bound for Israel or if it wishes to bring certain trademarks to the attention of Customs.
Nachman Cohen-Zedek, Dor Cohen-Zedek and Yossi Markovich
Contrary to common belief, the Italian legislative instruments against IP infringement are quite efficient. In 2003 specialised IP divisions were set up in 12 existing courts, and in September 2012 these were increased to 21. These divisions have exclusive competence to decide civil actions relating to trademarks, patents, copyright and unfair competition.
Malaysia remains committed to strengthening and enforcing its IP laws in order to improve domestic socio-economic development. The country’s efforts in fighting piracy and counterfeiting – which include improved legislation and enforcement – have won it praise. The inter-agency Special Anti-piracy Taskforce has been applauded for its efforts in “deterring and preventing infringing distribution networks”.
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
In spite of socio-economic challenges, Nigeria has continued to witness growth and expansion, diversification and a greater level of transparence. Contributing factors to this are Nigeria’s creative industries, which have grown somewhat informally, as well as a fast-emerging retail culture.
The Philippines IP Office (IPOPHIL) has vigorously pursued many programmes aimed at providing adequate and efficient ways to enforce trademark rights. It has also taken many initiatives to pursue legal reforms to create stronger IP rights and to build a regime that values and respects intellectual property. IPOPHIL has worked with other government agencies and organisations to facilitate the exchange of information and to find cost-effective methods of enforcing IP rights.
Romania joined the European Union on January 1 2007. Consequently, the Romanian customs authorities’ responsibility to protect the external border of the European Union increased considerably, as Romania has a significant border with non-EU countries (eg, Serbia, Ukraine and Moldova).
The current economic crisis and the attendant drop in consumer income have motivated Russians to seek cheaper alternatives for consumer goods. By necessity, they have become less discerning as to sources of origin and quality. This has led to an increase in the circulation of counterfeit goods.
David Aylen and Maria Aronikova
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. Turkey’s new IP Code entered into force on January 10 2017 upon its publication in the Official Gazette. The new law amends decree-laws pertaining to the protection of trademarks, patents, geographical indications and industrial designs, unifying them into a single code.
Barış Kalaycı, Zeynep Seda Alhas and Ali Bozoğlu
No laws or regulations deal specifically with counterfeiting in Ukraine. Thus, this type of infringement is dealt with under the Trademark Law. Although that statute contains no definition of ‘counterfeit goods’, the relevant civil and criminal laws contain blanket provisions referring to the Trademark Law, particularly the definition of ‘use of a trademark’.
Alexander Pakharenko and John Anderson
The framework for taking action against counterfeit goods in the United Kingdom includes both national and EU provisions. In the United Kingdom, trademark offences are listed in Section 92 of the Trademarks Act 1994. The Trademarks Act is supported by other legislation, including the Fraud Act 2006 and the Proceeds of Crime Act 2002.
Civil counterfeiting enforcement primarily falls under the Lanham Act (15 USC Section 1051), while criminal counterfeiting enforcement primarily falls under 18 USC Section 2320. 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
The import and marketing of counterfeit products in Venezuela pose a major problem for rights holders. Although in recent years the authorities have shown increasing concern over counterfeiting and implemented mechanisms to combat it, these efforts have been largely inadequate, due to increased traffic in these goods worldwide and new distribution methods adopted by counterfeiters.
Manuel Polanco F and Guillermo A López Z
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