Anti-counterfeiting: A Global Guide 2019

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

Introduction

Brexit and the future of anti-counterfeiting collaboration

Anti-Counterfeiting Group
Brexit is a difficult road to travel and ensuring continued high levels of enforcement cooperation will prove difficult. Once the United Kingdom withdraws from the European Union, it will effectively become a third country that is unlikely to have direct access to many key databases. 

Counterfeit automotive parts increasingly putting consumer safety at risk

BASCAP, International Chamber of Commerce
The European Office of Intellectual Property (EUIPO) estimated that €2.2 billion is lost every year by the legitimate parts industry to counterfeit tyre sales and €180 million each year due to counterfeit battery sales. Yet this represents only one part of the problem, there are other automotive parts that are frequently counterfeited in huge volumes:

Counterfeiting and data privacy: achieving the right balance in consumer protection

International Trademark Association
Recent developments in data protection regulation make it more difficult for law enforcement, the private sector and cybersecurity researchers to share information to help protect individuals and organisations from the dangers of counterfeiting.

Industry insight

Protecting your brand in the depths of the dark web

MarkMonitor
One of the main challenges in online brand protection is the fact that the threats come from multiple locations. But one area that is of particular concern to brands is the dark web.

Regional focus

Border seizure measures in the European Union

BOEHMERT & BOEHMERT Anwaltspartnerschaft mbB
According to a series of studies on IP infringement published in December 2016 by the EU Intellectual Property Office, the presence of fake goods in the marketplace causes the EU economy to lose over €83 billion and 790,000 jobs every year, as well as €14.3 billion in government revenue.

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. Due to its geographical location, the Western Balkans is well connected to other regions and continents.

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. The enforcement of IP rights involves planning, technology, intelligence, training and coordination, with support from a number of laws and treaties.

Procedures and strategies for anti-counterfeiting: Cambodia

Tilleke & Gibbins
Cambodia has no customs recordal system in place. If a rights holder uses an exclusive distributor in Cambodia, it may register an exclusive distributorship with the Department of IP Rights. Once the registration is accepted, it can be forwarded to Customs.

Procedures and strategies for anti-counterfeiting: Canada

Kestenberg Siegal Lipkus LLP
Between 1 January 2015 and 31 December 2018 the Canada Border Services Agency (Customs) accepted 248 requests for assistance from rights holders, including 86 copyrights and 3,204 trademarks. Customs encountered 73 shipments and contacted 60 rights holders with filed requests for assistance. 

Procedures and strategies for anti-counterfeiting: France

DLA Piper France LLP
When the EU Customs Regulation does not apply, rights holders can rely on the national provisions of the French IP Code. The French Customs Code will also apply to Customs and criminal procedures.

Procedures and strategies for anti-counterfeiting: Germany

COHAUSZ & FLORACK
For civil enforcement against counterfeiting, an application must be made to the ordinary courts. Preliminary ex parte measures play an important role, but are admissible only for some of the remedies available. Claims for damages, for example, can be enforced within substantive proceedings only.

Procedures and strategies for anti-counterfeiting: Greece

Malamis & Associates
Seizures and detentions of counterfeit goods took place in significant volume in Greece during 2018. Large seizures also took place involving goods in transit to neighbouring countries of the Balkan peninsula.

Procedures and strategies for anti-counterfeiting: India

Anand and Anand
The Penal Code sets out punishments for cheating, counterfeiting and possession of instruments for making counterfeits, among other things. The code’s provisions can be invoked in criminal actions, in addition to the provisions of specific statutes.

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
As an EU member state, Italy applies all the relevant EU regulations (including those on border measures) and has implemented the Agreement on Trade-Related Aspects of Intellectual Property Rights and the main international agreements in this field. 

Procedures and strategies for anti-counterfeiting: Mexico

Becerril, Coca & Becerril SC
The Official Database for Mexican Trademark Registrations of Mexican Customs is designed to allow rights holders to ask Customs to record information about their registered trademarks in Mexico, so that the administrative authorities can identify counterfeit goods being imported into the country in violation of such registered trademarks.

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: Romania

Cabinet M Oproiu
Romania joined the European Union on 1 January 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.

Procedures and strategies for anti-counterfeiting: Russia

Gorodissky & Partners
Administrative proceedings start with the rights holder filing a petition with the police, based on which the police conduct a raid on the infringer’s premises and seize any discovered counterfeit goods. They then pass samples of these to the trademark owner (or its authorised local representative) so that it can confirm the origin of the counterfeit.

Procedures and strategies for anti-counterfeiting: Saudi Arabia

Kadasa Intellectual Property
The Saudi Arabian Ministry of Finance adopted border measures for the protection of trademarks and copyrights in 2004. According to government sources, the measures are in line with Section 4 Part III of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs).

Procedures and strategies for anti-counterfeiting: Singapore

Robinson LLC
The Trademarks Act is the main legislation governing trademark infringement and anti-counterfeiting in Singapore. Part VI of the act criminalises the counterfeiting of a registered trademark, falsely applying a registered trademark to goods or services, and making or possessing an article used for counterfeiting.

Procedures and strategies for anti-counterfeiting: South Africa

Spoor & Fisher
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.

Procedures and strategies for anti-counterfeiting: Thailand

Tilleke & Gibbins
Customs plays a pivotal role in intercepting incoming shipments of counterfeit and pirated goods en route to the Thai market. A special feature of the Customs Act BE 2560 (2017) gives customs officials the authority to intervene ex officio to detain and seize suspicious counterfeit and pirated goods. 

Procedures and strategies for anti-counterfeiting: Turkey

Deris Attorney-at-Law Partnership
According to Turkish legislation, it is possible to register IP rights (ie, trademarks, industrial designs, patents, utility models, copyrights, geographical indications, integrated circuit topographies and plant breeders’ rights) before Customs, as the crucial first step in the fight against counterfeiting.

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. 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’.

Procedures and strategies for anti-counterfeiting: United Kingdom

Baker McKenzie
While Border Force may seize items suspected of infringing an IP right (including counterfeit, infringing or pirated goods) ex officio, this is quite uncommon (rights holders would still need to submit an ex officio application for action to secure destruction). Border Force will usually seize only such items where a rights holder has a customs application for action in place.

Procedures and strategies for anti-counterfeiting: United States

Adams and Reese LLP
Grey market goods do not qualify as counterfeit; therefore, distributors and sellers of grey market goods are not subject to criminal penalties. However, rights holders may have other claims against such distributors and sellers based on other intellectual property or contract laws.

Procedures and strategies for anti-counterfeiting: Vietnam

Tilleke & Gibbins
As a part of its World Trade Organisation commitments and its commitments under other trade agreements, Vietnam has introduced a number of laws to better protect IP rights.  In theory, the applicable laws have the highest priority, followed by decrees and circulars. However, in practice, the competent authorities often give higher weight to decrees and circulars as they are usually the most detailed regulations.