Anti-counterfeiting: A Global Guide 2020

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

Introduction

Counterfeiting and organised crime

Anti-Counterfeiting Group
Transnational organised crime groups scrutinise legal systems and then work to infiltrate legal supply chains and legitimate intermediary businesses.

Controlling the zone

Business Action to Stop Counterfeiting and Piracy
Along with the recent global proliferation of Free Trade Zones has come increasing vulnerability to a wide range of abuses by criminals.

Fighting the supply of and demand for counterfeit goods

International Trademark Association
As with legitimate goods, there are two drivers behind the production and sale of counterfeits: supply and demand. The battle against counterfeiting requires all stakeholders to address the issue on both fronts.

Industry insight

Counterfeit luxury goods

EBRAND
The lack of traceability and the long reach of the Internet pose additional risk for luxury brands which may appear liable if the public believe that it is the brands that are selling faulty products.

Brand protection in the digital world

OpSec Security
An effective online brand protection strategy allows you to recapture revenue, enjoy direct cost savings and safeguard your marketing campaign spend.

Protecting electronics and consumables across the globe

Venable LLP
As new technology constantly changes how counterfeiters interact with consumers the global nature of the crime has made it especially challenging for brand owners to track distribution channels.

Regional focus

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 fertile ground for the manufacture and distribution of counterfeit goods.

Country chapters

Procedures and strategies for anti-counterfeiting: Brazil

Kasznar Leonardos
Lawsuits on the grounds of trademark infringement are prosecuted before state courts and through private criminal prosecution brought by the rights holder.

Procedures and strategies for anti-counterfeiting: Canada

Kestenberg Siegal Lipkus LLP
Unsurprisingly, 2019 also saw the increase of shipments detained destined for fulfilment centres associated with e-commerce third-party marketplaces.

Procedures and strategies for anti-counterfeiting: China

SIPS
The Product Quality Law and the Anti-unfair Competition Law also provide important IP provisions for anti-counterfeiting and falsified trademarks.

Procedures and strategies for anti-counterfeiting: France

DLA Piper France LLP
Criminal proceedings are not the most favoured option for IP rights holders, but criminal penalties are usually considered to be more dissuasive for infringers.

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 if additional unfair acts are committed

Procedures and strategies for anti-counterfeiting: Greece

Malamis & Associates
A significant volume of seizures and detentions of counterfeit goods have taken place in Greece in recent years.

Procedures and strategies for anti-counterfeiting:  India

Anand and Anand
Customs currently does not treat parallel-imported or grey-market goods as prohibited goods unless they are being smuggled or imported outside their original packaging.

Procedures and strategies for anti-counterfeiting: Israel

Pearl Cohen Zedek Latzer Baratz
Customs is authorised to seize suspected goods (whether as a result of a complaint submitted by the rights holder or as a result of a random examination of shipments arriving in Israel).

Procedures and strategies for anti-counterfeiting: Italy

IP Law Galli
In the case of infringement, police investigations, undercover operations and seizure measures are available.

Procedures and strategies for anti-counterfeiting: Mexico

Uhthoff, Gómez Vega & Uhthoff SC
There are several legal instruments available which carry significant benefits to those who choose to fight back and protect their intangible assets.

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.

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: Saudi Arabia

Kadasa Intellectual Property
Any rights holder whose trademark has been infringed is entitled to file a civil action against the infringer before the competent commercial court in order to claim compensation.

Procedures and strategies for anti-counterfeiting: Sweden

Advokatfirman Vinge
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
The specialised IP court is expected to be further enlarged in 2020 to become the IP Rights and Commercial Court.

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 Kingdom

AA Thornton
Section 89 of the Trademarks Act allows the owner or licensee of a registered trademark to give written notice to HMRC that a consignment of goods is expected to arrive in the UK that will infringe the registered trademark.

Procedures and strategies for anti-counterfeiting: United States

Adams and Reese LLP
Anti-counterfeiting enforcement in the United States stems largely from two federal statutes: the Lanham Act (codified at 15 USC § 1051) and the Trademark Counterfeiting Act 1984 (codified at 18 USC § 2320).