Anti-counterfeiting and Online Brand Enforcement: Global Guide 2021

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

Introduction

Fighting the menace of criminal counterfeiting

Anti-Counterfeiting Group
The Anti-Counterfeiting Group (ACG) had intended for 2020 to be a year of great celebration for ACG members. For 40 years we have been fighting the menace of criminal counterfeiting and our successes over this time have been huge.

Counterfeiting and piracy in 2021 – the global impact

International Chamber of Commerce
If there’s one thing that we know about the trade of counterfeit and pirated goods, it is that it continues to increase alarmingly.

The life of a brandprotection professional during the pandemic

INTA
Counterfeiting continues to spread globally like a plague. In recent years, with the expansion of the Internet, brand-protection teams have had to battle with counterfeiters online, usually with limited resources to tackle these illicit traders.

Industry insight

A practical guide to anti-counterfeiting resources in the United States

Brooks Kushman PC
Knock-off and counterfeit goods have long plagued legitimate business – a problem that continues today. A report from the Department of Homeland Security in January 2020, indicated a 154% increase in counterfeit trade internationally, a jump from approximately $200 billion in 2005 to $509 billion in 2016.

Internet threats go viral – companies must react to keep brands secure

CSC
The events of the global coronavirus pandemic have forced significant changes in the way that we live our lives, how we work, socialise, shop, bank and consume media.

Return on investment – proving that protection pays

CSC
The implementation of a brand-protection programme can be a costly enterprise for a brand owner. In cases where an external service provider is used, there will generally be monetary costs associated with the monitoring technology and the provision of analyst consultancy that may be required to review results, produce summary reports and carry out enforcement work.

Pharmaceuticals: dealing with generic, fake and grey market drugs in China

FERRANTE Intellectual Property
In 2015, China became the world’s second largest pharmaceutical market. China’s drug retail market grew by 8% between 2015 and 2019, outperforming the sector’s global growth of 6% during the same period.

Brand owners must do more to block sale of counterfeits online

OFO Ventura
The covid-19 pandemic has affected commerce and brand enforcement around the globe. From March 2020, short but repeated lockdowns and other measures have been applied in Turkey, changing many aspects of trade.

Customs seizure based on trademark rights

Shiga International Patent Office
Japanese Customs can seize imported goods that infringe trademark rights. If a trademark owner wishes Customs to seize infringing goods, the owner should record its trademark rights with Customs by filing a request for import seizure.

Update on the legislation and case law relating to online infringement in China

Wanhuida Intellectual Property
After six years of preparation, the E-commerce Law entered into force in January 2019. The new law provides, among other things, an important enforcement tool – the ‘notice and takedown’ system, which was introduced in the Civil Code and entered into effect on 1 January 2021.

Country chapters

Procedures and strategies for anti-counterfeiting: Brazil

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

Procedures and strategies for anti-counterfeiting: Canada

Kestenberg Siegal Lipkus LLP
In 2020, for the second consecutive year, there was a significant increase in the number of detained shipments by the Canada Border Services Agency (Customs), including several containers of counterfeit merchandise destined for global distribution.

Procedures and strategies for anti-counterfeiting: China

Beijing Kangrui Law Firm
Customs protection is one of the important ways to protect intellectual property. The premise of such protection is simple: a trademark is registered and the owner of that mark applies to the General Administration of Customs for a record.

Procedures and strategies for anti-counterfeiting: France

Fiducial Legal By Lamy
As a member of the European Union and WIPO, France complies with all EU regulations and directives, as well as all the major international treaties concerning IP rights. As such, EU trademarks and designs are protected in all French territory.

Procedures and strategies for anti-counterfeiting: Germany

COHAUSZ & FLORACK
A cost-free border seizure application can be filed with the competent customs authority. If this is granted, the customs authorities will withhold suspicious goods that are intended to be introduced into the European Union or Germany.

Procedures and strategies for anti-counterfeiting: Greece

Dr Helen G Papaconstantinou and Partners Law Firm
Greece is one of five member states of the European Union accounting for more than 90% of the total detentions of suspected counterfeit goods in the EU internal market and appears in both the top rankings of detentions by number of items and estimated value of items detained.

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
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
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 (TRIPs) and the main international agreements in this field.

Procedures and strategies for anti-counterfeiting: Mexico

Uhthoff, Gómez Vega & Uhthoff SC
In Mexican law, IP rights violations can be considered either administrative infringements (ie, trademark or copyright) or criminal counterfeiting cases, depending on the facts of the actual matter, each with its own procedural regulations and effects.

Procedures and strategies for anti-counterfeiting: Romania

Cabinet M Oproiu
Among the customs offices located on the EU border, the one in Constanţa Sud-Agigea harbour is by far the most important when it comes to combating the trafficking of counterfeit goods by sea.

Procedures and strategies for anti-counterfeiting: Russia

Gorodissky & Partners
Russia is a signatory to almost all the international treaties governing IP matters. The international conventions and treaties are regarded as integral parts of the Russian legal system.

Procedures and strategies for anti-counterfeiting: Sweden

Swedish IP legislation is based largely on European and international regulations and provisions, as well as international treaties on IP rights.

Procedures and strategies for anti-counterfeiting: Taiwan

Tsai, Lee & Chen Patent Attorneys & Attorneys at Law
Taiwan is an innovation-driven economy, ranked 12 out of 141 economies according to the World Economic Forum Global Competitiveness Report 2019.

Procedures and strategies for anti-counterfeiting: Turkey

Deris Attorney-at-Law Partnership
Turkey is a party to a number of international conventions, including the Paris Convention, the Agreement on Trade-Related Aspects of Intellectual Property Rights and the Berne Convention.

Procedures and strategies for anti-counterfeiting: United States

Adams and Reese LLP
The Lanham Act provides civil remedies for trademark infringement and counterfeiting, while the Trademark Counterfeiting Act criminalises certain violations of the Lanham Act’s anti-counterfeiting provisions, making these offences federal crimes.