Anti-counterfeiting: A Global Guide 2018

A practical, country-by-country analysis of anti-counterfeiting procedure written by the world's leading firms.

Introduction

Role of property owners and governments in mitigating trade in counterfeits

BASCAP, International Chamber of Commerce
While there are several initiatives in place to assist landlords in fighting counterfeiting, a great deal more can and must be done by landlords, governments, enforcement agencies and rights holders in transforming these efforts into a comprehensive and collective response to this massive problem.

Untangling the worldwide web of counterfeiting

International Trademark Association
Counterfeiting is a priority policy issue for the International Trademark Association (INTA). Counterfeit goods are reaching consumers in all corners of the world and have permeated the online marketplace.

Industry insight

Liability of intermediaries: the effective anti-counterfeiting tool

Drakopoulos
Counterfeiters often act through third parties that might not be aware that their services are used for illegal activities. Such third-party engagement renders the liability of intermediaries a cutting-edge matter in IP law worldwide.

Platform immunity under the microscope: cooperation is the best way forward

INCOPRO
Online operators such as eBay, Facebook, Instagram and Amazon find themselves under the microscope. They have become hugely successful organisations, but their platforms are often misused by those infringing rights or promoting bad locations.

A global approach to anti-counterfeiting

MarkMonitor
The reality is that as the counterfeiting market expands, brands will never be able to eliminate every single instance of it. However, it is not necessarily a losing battle. Instead, it requires a change of focus.

Fast fashion and IP regulation: will fast fashion kill the golden goose?

McCarter & English, LLP
Compared to other forms of artistic expression – such as literature, music, films and theatrical works – fashion designs are left with limited IP rights and protection.

Regional focus

Border seizure measures in the European Union

Boehmert & Boehmert Anwaltspartnerschaft mbB
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.

Procedures and strategies for anti-counterfeiting: Western Balkans

Zivko Mijatovic & Partners
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.

Country chapters

Procedures and strategies for anti-counterfeiting: Brazil

Kasznar Leonardos Intellectual Property
The growth of the Brazilian market and economy is paralleled by the increase in counterfeiting activities.

Procedures and strategies for anti-counterfeiting: Canada

Baker McKenzie

Procedures and strategies for anti-counterfeiting: China

CCPIT Patent and Trademark Law Office
Brand owners often contend that counterfeiting and trademark infringement are a high-profit and low-risk business, and that trademark protection falls short in China. However, positive changes have been taking place.

Procedures and strategies for anti-counterfeiting: Egypt

Al Tamimi & Company in Association with Nour & Partners
In addition to the IP Law, a number of other laws and regulations govern the protection and enforcement of trademark rights in Egypt.

Procedures and strategies for anti-counterfeiting: Germany

COHAUSZ & FLORACK
In case of slavish imitations which are not within the scope of IP rights, the Act Against Unfair Competition provides for complementary protection of performances if additional unfair competition aspects are given, although the requirements are less strict for identical replications.

Procedures and strategies for anti-counterfeiting: Greece

Malamis & Associates
Seizures and detentions of counterfeit goods continued to be significant in Greece in 2017. 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.

Procedures and strategies for anti-counterfeiting: India

Anand and Anand
The Trademarks Act is the principal legislation governing trademarks in India. The act provides both civil and criminal statutory remedies against the infringement of a registered trademark.

Procedures and strategies for anti-counterfeiting: Israel

Pearl Cohen Zedek Latzer Baratz
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.

Procedures and strategies for anti-counterfeiting: Italy

IP_Law_Galli Studio Legale
Contrary to common belief, the Italian legislative instruments against IP infringement are quite effective.

Procedures and strategies for anti-counterfeiting: Mexico

Becerril, Coca & Becerril, SC
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.

Procedures and strategies for anti-counterfeiting: Nigeria

Jackson, Etti & Edu
Nigeria has no specific anti-counterfeiting law – at least, not a broad one that covers all types of goods and all species of anti-counterfeiting. Hence, the fight against counterfeits involves the creative application of the various laws that affect rights holders in one way or another.

Procedures and strategies for anti-counterfeiting: Panama

Estudio Benedetti
Customs authorities are empowered to inspect and seize merchandise that is subject to customs procedures and which may violate Panama’s IP laws, regardless of its final destination. This means that even in-transit goods can be inspected and seized.

Procedures and strategies for anti-counterfeiting: Philippines

Federis & Associates Law Offices
The Intellectual Property Office of the Philippines (IPOPHIL) continues to be at the forefront of activities geared towards providing adequate, reliable and effective protection and enforcement of IP rights.

Procedures and strategies for anti-counterfeiting: Romania

Cabinet M Oproiu
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.

Procedures and strategies for anti-counterfeiting: Russia

Gowling WLG (International) Inc
The continuing economic crisis and the drop in disposable income have motivated Russians to seek cheaper alternatives for consumer goods. This has led to an increase in the circulation of counterfeit goods.

Procedures and strategies for anti-counterfeiting: Saudi Arabia

Kadasa Intellectual Property
Saudi Customs has an internal IP rights unit which provides a database to facilitate enforcement against counterfeit goods. It is possible to formally request customs surveillance to safeguard against counterfeiting and trademark infringement.

Procedures and strategies for anti-counterfeiting: Turkey

Gün + Partners
The availability of preventive measures at Customs is vital in the fight against counterfeiting. In light of this, the Customs Code and the relevant customs regulations have been amended in line with TRIPs.

Procedures and strategies for anti-counterfeiting: United Arab Emirates

Al Tamimi & Company
For many years, the United Arab Emirates has had one of the most active anti-counterfeiting regimes in the Middle East and Africa.

Procedures and strategies for anti-counterfeiting: United Kingdom

AA Thornton & Co
The primary piece of national legislation relating to trademarks in the United Kingdom is the Trademarks Act 1994. This act contains provisions covering trademark infringement as well as criminal offences relating to anti-counterfeiting.

Procedures and strategies for anti-counterfeiting: United States

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
US law offers a full arsenal of weapons that trademark owners can employ to combat counterfeiting at every step.

Procedures and strategies for anti-counterfeiting: Ukraine

Pakharenko & Partners
No laws or regulations deal specifically with counterfeiting in Ukraine. Thus, this type of infringement is dealt with under the Trademark Law.