fighting against brand counterfeiting in three key european member states towards a more...
TRANSCRIPT
Fighting Against Brand Counterfeiting in Three
Key European Member States Towards a More Comprehensive
Strategy
4-6 May 11
PURPOSE OF THE COURSE
● Provide additional knowledge and enhance participants’ skills on operational practices and
strategies of detection, identification and seizure of counterfeit products and organized crime’s
involvement therein
1/op.
4-6 May 11
CONTENT OF THE COURSE
2/op.
Section 1 -Intellectual property rights (IPRs): Basic definitions Copyright Patent Utility model Industrial design Lay-out design Trade name Trademark Designation of origin and geographical indicationInternational Treaties, Agreements and Conventions The Paris Convention The Madrid Agreement TRIPSSection 2 - Counterfeiting and Piracy
▪ Definitions Counterfeiting as a financial and IPR crime Negative impact of counterfeiting on: IPR holders; consumers
health and safety; national economy and society Types of counterfeitersImplication of organized crime The Palermo Convention The link with other serious organised crimes
4-6 May 11
CONTENT OF THE COURSE
2/bis.
Section 3 - Counterfeiting at the European Union Level Relevant EC Regulations and Directives Remedies and actions against counterfeiting Statistics and data on seizures of counterfeited goods at the EU bordersSection 4 - Counterfeiting in Poland Polish legislation Current situation and estimates of the problem: seizures at EU borders; countries of
origin; most commonly counterfeited products Civil and criminal sanctions in cases of counterfeiting Section 5 - Main concepts and suggested best practices Detection and identification methods Investigation Prosecution – Legal proceedings Closing: Revision of concepts Application of concepts learnt Management of skills and knowledge acquired Appraisal of the subjects studied
4-6 May 11
LEARNING OUTCOMES
Broadening and consolidation of theoretical and technical knowledge on anti-counterfeiting legislation and strategies
Enhancement of the expertise and knowledge of the trainees;
Sharing of experience and practical knowledge;
Improvement of inter-sectorial cooperation;
Coordination and improvement of communication among various relevant public institutions at the national level
Sharing of best practices at the levels of detection, investigation, prosecution and assets recovery.
3/op.
Section 1 Basic Definitions of IPRs and Treaties,
Agreements andConventions at the international level
4-6 May 11
Copyright and related rights
Legal protection of “literary and artistic works”
Berne Convention for the Protection of Literary and Artistic Work
164 contracting State-parties
1/s.1
4-6 May 11
The World Intellectual Property Organization (WIPO) Copyright Treaty
Adopted December 20th 1996
Complementary legal tool in the grant and protection of copyright
Applies to categories of works not included in the Berne Convention
2/s.1
4-6 May 11
Copyright and Related Rights Protection
The copyright holder is granted exclusive rights
2 typologies of rights granted by copyright: economic rights and moral rights
Rights originating from copyright have their limitations
purpose: Protecting, Encouraging, Rewarding
3/s.1
4-6 May 11
Exclusions
Fair use
Research
Education
4/s.1
4-6 May 11
Patent
Exclusive right granted for an invention
Protection for the invention to the owner of the patent
Granted for a limited period
Patent protection –>patent owner's consent required
5/s.1
4-6 May 11
Utility model
Exclusive right granted for an invention
Prevents others from commercially using the protected invention without authorization
Limited period of time
Similar to a patent
6/s.1
4-6 May 11
Differences between utility models and patents:
Utility model requirements are less stringent than for patents
Term of protection for utility models is shorter than for patents
Patent offices do not examine applications as to substance prior to registration
Utility models: cheaper to obtain and to maintain
Utility model protection can only be obtained for certain fields of technology and only for products but not for processes
7/s.1
4-6 May 11
Designs
Ornamental or aesthetic aspect of an article
Applied to a wide variety of products of industry and handicraft
Industrial design is primarily of an aesthetic nature and does not protect any technical features of the article to which it is applied.
8/s.1
4-6 May 11
Designs 2
Unregistered Designs
Registered Designs
Industrial Designs
9/s.1
4-6 May 11
Trademarks
Type of industrial property, protected by intellectual property rights
Distinctive sign identifies certain goods or services produced or provided by a specific person or enterprise
Helps consumers identify and purchase a product or service
Provides protection to the owner of the mark
10/s.1
4-6 May 11
Examples of Trademarks
10/bis
4-6 May 11
GEOGRAPHICAL INDICATIONS
Sign used on goods with a specific geographical origin and qualities, reputation or characteristics essentially attributable to that place of origin.
APPELLATION OF ORIGIN
Special type of geographical indication
▪ The concept of a geographic indication encompasses appellations of origin
11/s.1
4-6 May 11
Examples of GI’s
Champagne Florida Oranges Parma Ham (Italian ham) Basmati (Indo-Pakistani rice) Feta (cheese from Greece) JABŁKA ŁĄCKIE (apples of different
varieties from Poland)
11/bis
4-6 May 11
Copyright and Related Rights IThe Berne Convention for the Protection of Literary and
Artistic Work (1886)
▪ Legal basis for the protection of “literally and artisticworks”.
▪ Basic principles: i.) “national treatment”ii.) “automatic” protectioniii.)“independence” of protection▪ Provisions determining the minimum protection to be granted▪ Special provisions for developing countries which want to make
use of them▪“Moral rights”: the right to claim authorship of the work and the right
to object to any mutilation or deformation or other modification of, or other derogatory action in relation to, the work which would be prejudicial to the author’s honour or reputation
▪ Poland is a contracting party of the Berne Convention (164 member states)
12/s.1
4-6 May 11
Copyright and Related Rights IIThe WIPO Copyright Treaty (1996)
▪ Complementary legal tool of the Berne Convention on two subject matters: i.) computer programmesii.) compilations of data or other material (“databases”)▪ Grant to authors the exclusive rights of: i.) distributionii.) rentaliii.) communication to the public▪ Creation of legal obligations for each Member State:i.) enforcement proceduresii.) effective action to prevent infringements and remedies as deterrent to further infringements
▪ Poland is a contracting party of the WIPO Copyright Treaty (88 member states)
13/s.1
4-6 May 11
Industrial Property IThe Paris Convention (1883)
▪ Basic reference document for:patents, utility models, industrial designs, lay-out designs, trade
names/firms and marks, designation of origin and geographical indications
▪ Basic provisions: i.) national treatmentii.) right of priorityiii.) common rules applying to all the categories of Industrial Property
defined by the Conventioniv.) repression of unfair competition▪ Conditions for filing and registration of trademarks
determined and regulated in each country by domestic legislations;
▪ Trademark registered in a country considered independent of marks registered in the other countries of the UE, including the country of origin.
▪ Poland is a contracting party of the Paris Convention (173 member states)
14/s.1
4-6 May 11
Industrial Property IIThe Patent Cooperation Treaty (1970)
▪ Simultaneous patent protection by filing an "international" patent application
▪ International mechanism of control and verification of patentability and grant of patent
▪ Advantages for applicants:i.) More time to reflect whether:
seek protection in foreign countries / appoint local patent agents in each foreign country / pay national fees etc.;
ii.) Reduction / elimination of search and examination work of national patent offices;
iii.) Opportunity for third parties to formulate a well-founded opinion about the patentability of the claimed invention each international application is published together with a search report.
▪ Poland is a contracting party of the Patent Cooperation Treaty (142 member states)
15/s.1
4-6 May 11
Industrial Property IIIThe Hague Agreement on Industrial Designs
▪ Protection for industrial designs single international application filed with the International Bureau of WIPO
▪ Currently constituted by two international treaties:i.) The Hague Act of 28 November 1960 ii.) The Geneva Act of 2 July, 1999
▪ International registration mechanism of Industrial Designs provided by the Hague System Concerning the International Registration of Industrial Designs
Advantage:Simplification of management of an industrial design registration it is possible to record subsequent changes or renew the
registration through a single procedural step with the International Bureau of WIPO
▪ Poland is a contracting party of the Hague Agreement on Industrial Designs (56 member states)
16/s.1
4-6 May 11
Industrial Property IVThe Washington Treaty on Integrated circuits and Layout-
designs (1989, not yet into force)
▪ Protection of Integrated circuits and Layout-designs within the territory of each of its members through:
i.) prevention of unlawful actions against Integrated circuits and Layout-designs; and ii.) appropriate legal remedies in cases of committed infringements.
▪ The establishment of a Union constituted by the Contacting parties for the purposes of the Treaty is foreseen in Art. 1
▪ Poland is NOT a contracting party (10 member States)
17/s.1
4-6 May 11
Industrial Property VThe Madrid System Concerning the International Registration
of Marks
Consists of:
i) The Madrid Agreement Concerning the International Registration of Marks (1891)
ii) The Protocol to the Madrid Agreement (1989)
Application for international registration based on a trademark application filed in the country of origin
Advantage: Protection of trademarks in several countries by filing one
application with the national or regional trademark office Simplification of management of the mark
▪ Poland is a contracting party of both the Madrid Agreement (56 members) and the Madrid Protocol (83 members)
18/s.1
4-6 May 11
Industrial Property VIThe Singapore Treaty on the Law of Trademarks (2006)
▪ Establishes common standards for procedural aspects of trademark registration and licensing▪ Advantages:i.) allows national trademark offices to progress to an entirely electronic communication system as efficient alternative to paper communications ii.) non-traditional marks explicitly recognized in an international instrument dealing with trademark law (the Treaty is applicable to all types of marks, including non-traditional visible marks, such as holograms, three-dimensional marks, movement marks, and also non-visible marks, such as sound, olfactory or taste and feel marks)
▪ The Treaty does not impose any obligations on Contracting Parties to: i) register new types of marks or ii) implement electronic filing systems or other automation systems
▪ Poland is a contracting party of the Singapore treaty since 2009 (22 members)
19/s.1
4-6 May 11
Industrial Property VIIThe Lisbon Agreement for the Protection of Appellations of
Origin and their International Registration (1958)
▪ Protection of appellations of origin
▪ Registration mechanisms:i.) Registration by the International Bureau of WIPO upon
request of the competent authorities of the interested contracting State
ii.) The International Bureau in charge of communicating the registration to the other contracting States.
iii.) A contracting State declares within one year, whether it can ensure the protection of a registered appellation
iv.) A registered appellation may not be declared to have become generic in a contracting State as long as it continues to be protected in the country of origin
▪ Poland is NOT a contracting party
20/s.1
4-6 May 11
The TRIPS Agreement WTO Agreement on Trade-related Aspects of Intellectual Property Rights
Introduction of IP rules into the multilateral trading systemAttempt to narrow the gaps of IP rights protection around the world▪ Legislation on:▪ copyright; trademarks; geographical indications, including appellations of origin; industrial designs; patents; integrated circuit layout-designs; monopolies for the developers of new plant varieties; trade dress▪ Basic stipulations:i.) proper application of basic principles of trading system and other international intellectual property agreements;ii.) adequate protection to IPRsiii.) enforcement of these rights at national leveliv.) dispute settlement on IPR issuesv.) special transitional arrangements during the period when the new system is being introduced
21/s.1
4-6 May 11
The TRIPS Agreement WTO Agreement on Trade-related Aspects of Intellectual Property Rights
▪ Basic principles:i.) “national treatment”ii.) the most-favoured-nation treatmentiii.) contribution of IP to technical innovation; transfer of technology for the benefit of producers and users should benefit Enhancement of economic and social welfare ▪ Poland is a contracting party of the TRIPS Agreement.
21/bis
4-6 May 11
ACTA: The Anti-Counterfeiting Trade Agreement
The current negotiating parties of ACTA are a mix of developed and emerging economies: Australia, Canada, the European Union, Japan, Korea, Mexico, Morocco, New Zealand, Singapore, Switzerland and the United States
International Cooperation. Areas for possible provisions include: – Capacity building and technical assistance in improving enforcement – International cooperation among enforcement agencies.
Enforcement Practices. Areas for possible provisions include: – Formal or informal public/private advisory groups; – Fostering of specialized intellectual property expertise within law
enforcement structures to ensure effective handling of IPR cases; – Measures for raising consumer public awareness about the importance
of IPR protection and the detrimental effects of IPR infringements;
22/s.1
4-6 May 11
ACTA: The Anti-Counterfeiting Trade Agreement2
Legal Framework: It is critical to have a strong and modern legal framework so that law enforcement agencies, the judiciary, and private citizens have the most up-to-date tools necessary to effectively bring counterfeiters and pirates to justice. Areas for possible provisions include:
– Border measures
– Civil enforcement
– Criminal enforcement
– Optical disc piracy
– Internet distribution and information technology
22/bis
4-6 May 11
IPR Administration
WIPO OHIM EPO National offices
– National Patent and TM Offices– National Copyright Offices– e.g. Ministries of Agriculture for GIs
23/s.1
SECTION 2Counterfeiting and Piracy and the Involvement of Organized
Crime
4-6 May 11
Definition
According to the TRIPS Agreement:
Counterfeit trademark goods: “any goods, including packaging, bearing without authorization a trademark which is essential to the trademark validly registered in respect of such goods, or which cannot be distinguished in its essential aspects from such a trademark, and which thereby infringes the rights of the owner of the trademark in question under the law of the country of importation.”
Pirated copyright goods: "shall mean any goods which are copies made without the consent of the right holder or person duly authorized by the right holder in the country of production and which are made directly or indirectly from an article where the making of that copy would have constituted an infringement of a copyright or a related right under the law of the country of importation.”
1/s.2
4-6 May 11
Counterfeiting according to the International Trademark Association:
inferior quality products; sale under a brand without the owner’s authorization
Identical or substantially indistinguishable from the registered mark for the same goods
2/s.2
4-6 May 11
Piracy according to the UNESCO World Anti-piracy Observatory:
reproduction and distribution;
communication or making available on online communication networks
of copyrighted protected material WITHOUT authorizationof the rights’ owner
Does the notion of commercial purpose determine thepiracy (upload of copyrighted protected material online whenthe commercial purpose is often missing)?
3/s.2
4-6 May 11
Deceptive and non-deceptive counterfeiting
Deceptive: purchase of counterfeit goods in “good faith”
Non-deceptive: knowledge of infringement of a trademark when purchasing a counterfeit product
4/s.2
4-6 May 11
Allusion and Expropriation
Allusion: Goods very similar but intentionally not identical to thosealready commercialized on the market or to goods which recall otherbrands or trademarks of famous articles.
Expropriation: (a) the original brand is affixed to goods which belong to product
categories different from the original one(b) the original product is imitated in its format or design or
functionality(c) goods are produced almost identical to the original articles, by
coping brands trademarks, design, format and technical characteristics (total counterfeiting)
5/s.2
4-6 May 11
Counterfeiting as an IP and Financial Crime
INTERPOL: “Intellectual Property Crime (IPC) is a generic term used to describe a wide range of counterfeiting and piracy offences”
IPC: Infringement of legal rights (copyright, trademarks and patents) which: guarantee the moral and economic rights of the creators recognize their creativity protect the dissemination of the creators’ workPC: Informal economy operating in parallel to the formal economy
Because of IPC’s impact on the Industry and trade sector, IPC is considered a financial crime.
Counterfeiting and Piracy: IPC crimes and by extension financial crimesOther types of financial crimes: currency counterfeiting, money laundering, payment/credit card fraud.
6/s.2
4-6 May 11
The Negative Impact of Counterfeiting
Is counterfeiting a relatively harmless and “victimless” crime?
According to the Mainstreaming Methodology for Estimating Costs of Crime project, counterfeiting has 3-level costs:
i. Costs in anticipation of crime: incur when measures are implemented in a preventive way to reduce the vulnerability of goods to counterfeiting.
ii. Costs as a consequence of crime: correspond to any costs or losses incurred by victims as a consequence crime.
iii. Costs in response of crime: are equivalent to expenses incurred for the detection of a crime and the prosecution of offenders.
7/s.2
4-6 May 11
The Negative Impact of Counterfeiting on Consumers:
Does the average consumer tend to consciously opt for counterfeit products when he/she cannot afford the original ones?
Aware and unaware consumers Are they both–> deceived?
Counterfeit pharmaceuticals and cosmetics; food and beverages; toys; vehicle spare parts–>Hazardous for consumers’ health and safety
≠
Counterfeit fashionable products that rarely harm consumers
8/s.2
4-6 May 11
Is counterfeiting a harmless and victimless crime?
Costs deriving from counterfeiting: Direct costs: reduction in tax revenues Indirect losses: reluctance towards a government’s capacity to
comply with IPR, reduction in foreign investments, decrease of exports etc.
The State as a victim of counterfeiting
police costs justice costs costs deriving from criminal sanctions costs linked to the drawing-up of a legislative structure which
disciplines the crime penalties and costs necessary to have effective controls at
customs.
9/s.2
4-6 May 11
Types of Counterfeiters (Staake and Fleisch)
Disaggregators: Goods produced are easily made and are often of poor quality.
Imitators: Produce replicas of medium quality, counterfeiting both brands and designs.
Fraudsters: produce low quality counterfeit goods.
Desperados: usually produce easily imitable goods.
Counterfeit smugglers: they profit by avoiding tax and violating custom laws.
Organised crime groups
10/s.2
4-6 May 11
Definition of Organized Criminal Group“A structured group of three or more persons, existing for a period
of time and acting in concert with the aim of committing one or more serious crimes or offences established in accordance with
this convention, in order to obtain, directly and indirectly, an economic or other material benefit.” (Art. 2, UNTOCC)
* Structured group of three or more persons* Existing for a period of time* Wilful perpetration of serious crimes to obtain direct or indirect
financial or other material benefit+ interconnection with other forms of illegal trade (trafficking in arms,
drugs, human beings, etc.)+ exercise of illegal practices such as blackmail, extortion, corruption,
bribery, intimidation, murder etc. + adoption of marketing strategies and commercial practices+ transnational criminal networks
Well-organized transnational criminal activity (illegal mass producers)
11/s.2
4-6 May 11
Further definitions according to the UNTOCC
Serious crime: Offence punishable by a maximum deprivation of liberty of at least 4 years (art. 2 b)
Convention offences (art. 5, 6, 8 and 23)
serious/ transnational/ involving organized criminal group
Participation in organized criminal group (art. 5) Conspiracy Active participation in criminal activities of the organized group
or other activities in the knowledge that participation contributes to the group's criminal aim
12/s.2
Section 3Counterfeiting at the European Union
Level
4-6 May 11
GREEN PAPER (1998)
Objectives(a) assessment of the economic impact of counterfeiting and
piracy in the Single Market; (b) review of the existing legislation in this field and identification
of the problems and the improvements to be made on the legal front;
(c) examination of the need for Community action (objectives of the Single Market).
Areas of possible improvement: monitoring by the private sector; use of technical devices; sanctions and other means of enforcing intellectual property
rights; administrative cooperation between the competent authorities.
1/s.3
4-6 May 11
DIRECTIVE 2001/29/EC
EU Copyright Directive (EUCD) on the harmonization of certainaspects of copyright and related rights in the information society (in compliance with the WIPO Copyright Treaty)
▪ keep the legal framework of the EU Member States in line with the international Conventions on the subject of copyright
prevent and punish all forms of unauthorized use of works resulting from the activity of human intellect
harmonized protection at the Community level, especially diffusion of digital technology
guarantee of the exclusivity rights for the IPR holder (including those of economic use)
protection of the IPR holder’s right to manage the information related to his/her work
specification of the content of rights of: - reproduction; - communication to the public;
- distribution.
2/s.3
4-6 May 11
DIRECTIVE 2001/29 /EC(Art. 6-7)
ensure adequate legal protection against the circumvention of the technological measures implemented by the right holders to prevent unauthorized acts on their works protected by copyright;
provide for adequate legal protection for rights management information (Art. 7)
Ratifying countries shall provide adequate legal measures against the manufacture, import, distribution or sale of devices, products or components:
a) are promoted, advertised or marketed for the purpose of circumvention of the said technological measures;
b) have only a limited commercially significant purpose or use other than to circumvent the technological measures;
c) are primarily designed, produced adapted or performed for the purpose of enabling or facilitating the circumvention of the technological measures (Art. 6.2)
The EUCD calls Member States for the provision of adequate legal protection against anyone who:
a) removes or modifies, without the authorization of the right holder, any rights management information;
b) distributes, imports for distribution, broadcasts, communicates or makes available to the public, protected works from which the rights management information has been removed or altered without authorization.
Examples of national implementation found in France, the UK, Finland, Italy etc.
3/s.3
4-6 May 11
COUNCIL REGULATION 1383/2003 ON CUSTOMS COOPERATION
improvement of customs cooperation for the identification of goods infringing an IPR
distinction between “counterfeit” (goods unlawfully bearing a trademark identical or very similar to the registered one) and “pirated goods” (unauthorized copies of a work protected by copyright)
applied when products infringe:a) a patent registered in one of the EU member States, andb) an indication of origin. Art. 1: customs actions performed upon goods intended for
export, import and transit Art. 11: destruction of the alleged suspended or seized
infringing goods with the consent of the right holder Art. 16: after the end of judicial proceedings, the counterfeit
goods cannot:– enter the EU channels of commerce,– be exported and– must be suspended in case they were already into
commerce
4/s.3
4-6 May 11
COMMISSION REGULATION (EC) No 1891/2004 definition of the natural and legal persons who may represent
the right holder or any other person authorized to make use of the right
specification of the nature of the proof of ownership of intellectual property
Absence of a unified EU customs entity→ commitment of the 27 member states to:
i. work togetherii. be subject to common regulationsiii. exchange information through a centralized information
system.
EU customs practices still have different characteristics in each member-State
Even if the means used to enforce IP rights have been harmonized, civil and criminal procedures are different in each member state.
5/s.3
4-6 May 11
DIRECTIVE 2004/48/EC (IPR ENFORCEMENT DIRECTIVE)
commitment to obligations resulting from the TRIPs Agreement
Object: protection of IPRs including industrial property rights
presumption of paternity of the work to the advantage of the person who placed his/her name on the said work (Berne Convention)
applied in any case of the infringement of an IPR in a member-State or in the EU (without any prejudice to the application of a more stringent protection provided by other national or Community means)
Art. 3 §1: call to member states to adopt effective, proportionate and dissuasive remedies and procedures to enforce IPR
6/s.3
4-6 May 11
DIRECTIVE 2004/48/EC
(IPR ENFORCEMENT DIRECTIVE) (Art.9 and 13)
possibility for the judicial authorities, and upon request of the claimant, to order the release of information on the infringer or to any person:
a) found in possession of goods infringing an IPR;b) commercially distributing such goods;c) providing services used in infringing activities;d) to any other person indicated by the before mentioned subjects. possible provisional measures by judicial authorities to prevent an
alleged IPR infringement or to forbid the continuation of an alleged infringing activity
possibility of seizure of the alleged infringing goods (including the blocking of her/his bank accounts and other assets).
compensation of damages upon 2 calculation standards: 1→ assessment of the economic consequences suffered by the damaged party 2→ assessment of the economic value of the IPR and of the licenses.
7/s.3
4-6 May 11
DECLARATION 2005/295/CE
Enforcement of: royalties; rights in connection with the royalties; rights of makers of topographies; rights of trademarks; rights on designs and models; registered trademarks; rights coming from complementary, protective certifications; geographical indications; rights of public utility; sole right for vegetal inventions; commercial names if protected by sole right of the domestic
legislation.
8/s.3
4-6 May 11
THE IP CRIMINAL ENFORCEMENT DIRECTIVE (CED)
Still at the stage of discussion within European Institutions Novelty for the legislative framework CED will specifically
address against counterfeiting and piracy Despite the criticisms to CED, by proposing criminal measures to
reduce counterfeiting and piracy the European Commission is recognizing
- that counterfeiting and piracy are supporting activities of organised crime
- that some counterfeit products are real threat for consumers’ health and safety
CED contains provisions on penalties to be inflicted for committing the crime and on confiscation of goods of the offender
Patents and Plants Varieties Rights are excluded from the sphere of application of the CED
CED is also applicable to activities - committed on commercial scale - intentional
Interesting provisions creation of joint investigation teams between Member States
9/s.3
4-6 May 11
EU Observatory on Counterfeiting and Piracy The Observatory has been launched to:
– improve the quality of information and statistics related to counterfeiting and piracy on the Internal Market of the EU
– identify and spread national best practice strategies and enforcement techniques from both the public as well as the private sector
– help raise public awareness.
The Observatory is focused on active delivery and as such, it has already commenced work in a number of key areas:
– as an example, the Commission has carried out an exercise to identify structures and frameworks currently in place to combat IP infringements, within Member States
The Observatory is composed of members from both the private and public sector
– Private industry representatives from a broad range of European and national associations were invited to represent a wide diversity of sectors and geographical areas.
– In respect of public sector representatives, Member States have designated
national representatives to take part.
10/s.3
4-6 May 11
NUMBER OF REGISTERED CASES 1999 - 2009
11/s.3
Source: TAXUD
4-6 May 11
NUMBER OF ARTICLES DETAINED 1999 - 2009
12/s.3
Source: TAXUD
4-6 May 11
COUNTERFEIT MEDICAL PRODUCTS DETAINED
13/s.3
Counterfeit medical products detained
0
2000000
4000000
6000000
8000000
10000000
12000000
14000000
2006 2007 2008 2009
Number of articles detained
Source UNICRI elaboration based on the TAXUD 2006-2009 reports
4-6 May 11
COUNTERFEIT MEDICAL PRODUCTS
14/s.3
Counterfeit medical products
0
500
1000
1500
2000
2500
3000
3500
4000
2006 2007 2008 2009
Number of cases
Source UNICRI elaboration based on the TAXUD 2006-2009 reports
4-6 May 11
COUNTRIES OF ORIGIN
15/s.3
Source: TAXUD
4-6 May 11
STATISTICS ON THE INCIDENCE OF COUNTERFEITING WITHIN THE EU BORDERS
WCO Estimations statistics on the number of seizures by customs authorities within
member countries of the organization statistics collected through the Customs Enforcement Network
system (CEN)
In 2009 increase in the trade of counterfeit products potentially dangerous for consumers’ health and safety (pharmaceutical products and spare parts)
China, Italy and Mexico are in the top 10 category for what concerns:
- the number of cases registered- the number of items seized in 2009
Positive interpretation: great commitment of the national authorities in the fight against IPR infringements
16/s.3
4-6 May 11 17/s.3
Source: WCO
4-6 May 11
INCIDENCE OF COUNTERFEITING WITHIN THE EU BORDERS BASED ON SEIZURES
Cigarettes ▪ Wallets ▪ Electronics Tobacco products ▪ Medicines ▪ Children's toys Alcohol ▪ Pharmaceutical products ▪ Airline parts Perfumes ▪ Branded hair straighteners ▪ Olive oil Handbags ▪ Designer watches ▪ Toothpaste Coats ▪ Scarves ▪ Shoes Football shirts ▪ CDs and DVDs ▪ Branded condoms Razor blades ▪ Cosmetics ▪ Perfumes
18/s.3
4-6 May 11 19/s.3
Section 4Counterfeiting in Poland
4-6 May 11
NATIONAL LEGISLATIONON COPYRIGHT AND RELATED RIGHTS
Copyright is protected by: The Copyright and Related Rights Act of 4 February 1994In addition a number of other copyright protection-related laws and
regulations are in force: The Code of Civil Procedure – act of 17 November 1964 The Criminal Code Act of 6 June 1997 The Act on Radio and TV Broadcasting of 29 December 1992 The Act on Industrial Property Law of 30 June 2000 The Act on the Protection of Databases of 27 July 2001 The Act on the Protection of Certain Services provided by
Electronic Means based on or consisting in Conditional Access of 5 July 2002
The Act on providing services by electronic means of 18 July 2002
The Act on Customs Law of 19 March 2004
1/s.4
4-6 May 11
NATIONAL LEGISLATIONON COPYRIGHT AND RELATED RIGHTS
The Ordinance of the Minister of Justice of 16 October 2002 on the designation of regional courts hearing cases concerning infringements of copyright and related rights
The Ordinance of the Minister of Culture of 2 June 2003 on specific categories of equipment and optical discs for recording works and payments related to the equipment and optical discs on account on their sale by producers and importers
The Ordinance of the Minister of Culture of 30 April 2004 on the registration of information about the production of optical discs and types of identification codes
The Regulation of the President of the Council of Ministers n.83 of 9 November 2000.
1/bis
4-6 May 11
OTHER NATIONAL LAWS
Patents (Utility Models), Ordinance No. 179, 1993 issued by the Executive
Integrated Circuits, Ordinance No. 20, 1993 Plant Variety (Seed Fees and Remunerations), Decree
No. 217 (Extract), 1996 issued by the Executive Plant Variety (Seed Industry Regulations), Decree No.
216 (Extract), 1996 issued by the Executive Unfair Competition, Act, 1993
2/s.4
4-6 May 11
LEGISLATION ON ORGANISED CRIME
The United Nations Convention against Transnational Organised Crime – Palermo Convention - was ratified in November 2001.
Poland adopted the Convention of Council of Europe for fighting against trafficking in human beings (entered into force on 1st February 2008)
The most important texts at national level are:– the Criminal Code, dated 6 June 1997– the Criminal Procedure Code, dated 6 June 1997– the Crown Witness Act, dated 25 June 1997– the Statute of 6 July 2001 on collecting, processing and transmitting of
criminal information– the Statute 22 January 1999 on secret data protection– the Banking Act, dated 29 August 1997
State efforts to combat organized crime in Poland:– the establishment of an Organized Crime Department (within the State
Prosecutor’s Office)– the new branch of the SOCA (British Serious Organised Crime Agency)
opened in Warsaw– membership ot the Tas Force on Organised Crime in the Baltic Region
3/s.4
4-6 May 11
SEIZURE OF COUNTERFEIT GOODS IN POLAND (2009)
Type of product Quantity of Items Clothes 263,449 Cigarettes 182,899 Shoes 93,300 Food products and drinks 70,905 Mobile phones and accessories 66,448 CDs, DVDs 54,711 Electronic equipment 34,450 Watches, jewellery and fancy goods 33,531 Cosmetics 24,748 Games, sports equipment, toys 13,782 Pharmaceuticals and medical products 8,980 Other goods 43,301 Total 847,243
Customs controls on suspect IPR infringement cases in the first half of 2009 resulted in the confiscation of over 840,000 fake pirated goods for a total value of over 19 millions Euros.
Source: Team of Counteracting Infringement of Copyright ad Related Rights,Special Report 2009
4/s.4
4-6 May 11
OVERVIEW OF CASES AND ARTICLES PER MEMBER STATE
5/s.4
4-6 May 11
REMEDIES AND ACTIONS AGAINST COUNTERFEITING
Border measures The Customs Services are the competent authorities
for administering applications for copyright infringements at borders.
Article 6.1 of the Council Regulation (EC) No 1383/03 of 22 July 2003 concern Customs Action and the applications to be submitted to Customs Authorities
Article 11.1 of the Council Regulation 1383/03 administers the destruction or disposal of infringing goods
Article 3.2 of the Council Regulation 1383/03 regulates the Minims import exception
The Customs Authorities are entitled to act ex-officio in copyright infringement cases
6/s.4
4-6 May 11
REMEDIES TO PROTECT COPYRIGHT HOLDERS
Pre-trial measures - (Article 80 of the Act on Copyright and Related Rights):
securing evidence and securing claims; obliging infringer to provide information being
material to the claims referred to above; obliging other persons to provide information on the
origin, distribution networks, volume and price of goods or services which infringe the right holder’s economic rights.
7/s.4
4-6 May 11
REMEDIES TO PROTECT COPYRIGHT HOLDERS
Civil remedies - (Article 79 of the Act on Copyright and Related Rights)
to cease the infringement to eliminate the consequences of the infringement to pay damages to render the acquired benefits to publish announcements in the press or to publish
the court judgment to make payment in favour of the Fund for Promotion
of Creative Activity
8/s.4
4-6 May 11
REMEDIES TO PROTECT COPYRIGHTS HOLDERS
Criminal penalties - (Articles 115 to 119 of the Act on Copyright and Related Rights)
Fine Restriction of liberty Imprisonment up to 5 years Damages.
9/s.4
4-6 May 11
BEST PRACTICE: THE TEAM FOR THE PROTECTION OF COPYRIGHT AND CERTAIN RELATED
RIGHTS
The Team was established by the Decree No. 83 of the President of the Council of Ministers of 9 November 2000. It is in charge of:
analysis of the implementation of the copyright and related rights law –>annual Report on the Observance of the Law in Poland to the Chairman of the Council of Ministers;
presentation of proposed measures to prevent the infringements of copyright and related rights and the combating of infringements –>Action Strategy to Protect Copyright and Related Rights in Poland;
development of the proposals of legislative amendments leading to more effective enforcement of
copyright and related rights law; periodic progress reports on the measures taken to combat
infringements of copyright and related rights.
10/s.4
Section 5Main Concepts and Suggested Best Practices for
Investigations
4-6 May 11
WAYS IN WHICH COUNTERFEITING INVESTIGATIONS CAN BE STARTED:
Receiving a complaint from the right holder, or
communications from other institutions;
Instances for Customs’ protection;
During normal controls of the territory;
Other police activities;
International cooperation and mutual
administrative assistance.
1/s.5
4-6 May 11
ENCOUNTERING A SUSPECT COUNTERFEIT PRODUCT FOR THE FIRST TIME, CONSIDER:
What is the product and is it illicit or licit?
Where can I obtain assistance to confirm (or not) my
suspicions?
Where do I obtain evidence of rights ownership?
What evidence is available to support or disprove
allegations of IPR infringement?
What evidence do I require to support a prosecution?
2/s.5
4-6 May 11
Additional info to be collected:
Companies and individuals involved in the production and distribution to recognize the possible involvement of an organised crime group.
Money transfers could provide important evidences for tracking illicit trading flows and obtaining the seizure and confiscation orders
Real estate and property also key points of the criminal chain
Details and registration of vehicles or other means of transport used in production and distribution
Details of mobile communications and IT hardware used
3/s.5
4-6 May 11
WHEN AN INSPECTION IS CARRIED OUT:
Tax records; Customs documentation in case of international transactions; Commercial correspondence; Any documentation found in the premises/facilities (e.g. agendas, notes,
receipts, correspondence, addresses) Any technical documentation (as declarations of conformity, technical
documentation, reports, etc...) or documentation pertaining to the production;
Verification of permits, notices and licenses to conduct the business (also in the case of e-commerce);
Documentation proving ownership of trademarks, licenses, concessions, supply contracts, royalties, etc ...;
Analysis of the quantity and composition of computer equipments (e.g. personal computers, local networks etc.);
Acquisition of magnetic media for the identification of transactions, special attention to data in hard disks of personal computers (back-up);
Identification of personnel working in the enterprise.
4/s.5
4-6 May 11
INFORMATION AVAILABLE IN EXISTING NATIONAL DATABASES
Analysis of other open sources; Analysis of databases on trademarks, patents, designs and
models, such as: - European trademarks (http://oami.europa.eu/) - International trademarks (http://wipo.int/portal/index.html.en) - European Patents Office - Other databases on designs and model.
National and regional IP enforcement associations; or Related industry associations (such as Union des
Fabricants, the pharmaceutical industry associations, etc.).
5/s.5
4-6 May 11
POSSIBLE INVESTIGATIVE METHODS Inspections at borders; Collection of photographic evidences; Identification of people and means; Technical investigations; Identification of the production/distribution chain, financial and
flow assets; Inspections (documents inspections, verification of the
information); Shadowing; Ambushes; Use of informants; Raids; Retrieve declarations and information; Other investigation techniques; Undercover operations.
6/s.5
4-6 May 11 7/s.5
4-6 May 11 8/s.5
4-6 May 11
The fake trainer is the one on the left, with the black Niketick. Did you get it right?
The bag on the left is counterfeit. If you look really closely, the string on the fake bag is much thinner than the string on the real one
9/s.5
4-6 May 11
TIPS FOR SPOTTING A FAKE
Extremely low prices should get your alarm bells ringing;
The logo might be off centre or slightly different to the genuine article;
Fake trainers and clothes usually have loose threads;
Colours might bleed into each other or it might not be consistent throughout;
Look out for poor quality zips and laces.
10/s.5
4-6 May 11
INTERVIEW WITH INFORMANT/SUSPECT 1. Conduct interviews in a location which reduces unnecessary
interruptions or distractions.2. Establish rapport with the person being interviewed to put him/her at
ease.3. Listen to the person. Let him/her first tell the story in his/her own
way. Listen carefully to each side.4. Be genuine and at ease.5. After hearing the entire story, ask for more information to fill in
details.6. Ask for clarification of key points.7. Note-taking may put the person being interviewed on edge.8. For cases of counterfeiting/tampering, ask who was with the person,
what happened in the store, any problems noted with the product at the store, and other questions which will provide you with more information on when, where, or why events took place, who was present, etc. If two investigators are involved in the interview, one should take notes while the other asks the questions. Video / audio recording should also be considered.
9. Watch for changes in attitudes, body language, hesitation in speech, etc. Describe your observations of body language and personal characteristics in your report.
11/s.5
4-6 May 11
THE USE OF INFORMANTS The Informant: “A person who informs or prefers to provide an
accusation against another, whom she/he suspects of the violation of some penal statute”
The use of informants is fundamental to investigative work and provides the opportunity to receive clear intelligence on the activities of an individual or groups of persons acting illegally.
Scale of reliability for the informants:
● Reliable - no doubt of person's authenticity; past info reliable in all instances
• Usually Reliable - some doubt, but past info has been reliable in most instances
• Fairly Reliable - some doubt, but past info has been reliable on average
• Not usually Reliable - there is doubt, and past info has only been reliable on occasion
• Unreliable - there is great doubt; past experience has proven them to be unreliable but that doesn't mean that this piece of info now is not reliable.
12/s.5
4-6 May 11
HOW TO OPERATE? Gathering information concerning the episode: charges, writtendocuments or complaints, interviewing, informed people and othercounterfeiters’ customers; Paying close attention in acquiring the notitia criminis, bypresetting information sources considered suitable; Aiming to detect the counterfeiting chain by activating eachinformative and investigation source whenever a criminalorganization is involved, according to the Palermo Convention’sdefinition; Contacting another law enforcement agency or a specializedorganisation if the assigned abilities do not allow to delve into somefiscal aspects, or other issues concerning immigration or jobconditions; Taking care data gathering to send to administrative centres inorder to improve the implementation of the prevention andrepression of those crimes; The rights owner should be informed in order for him to start,both a civil or criminal proceeding, and ask for compensation withprejudicial consequences for the counterfeiter.
13/s.5
4-6 May 11
FINANCIAL INVESTIGATIONS Common techniques to launder the proceeds derived from counterfeit trading and in
the counterfeit industry: cash payments: electronic payments; bank transfers. Cash money transfer services (via registered or unregistered money service
business) are less preferred
Indicators of possible involvement in laundering the proceeds from counterfeiting useful during investigations
Frequency of Paypal or Internet payments crediting bank accounts; Individuals receiving Paypal or Internet payments and/or transferring fund who have
no declared profession or low income jobs; Money remittances to China or other Asian countries known to produce counterfeit
goods; Establishment of shell companies or transit accounts to facilitate laundering of
proceed derived from counterfeit industry (and no legitimate economic justification); Cash payments using underground banking services; Sale of counterfeit goods mixed with original goods; Suspicion transaction reports from customs authorities identified companies/persons
using importation trade documents when there; Prices of the goods abnormally low for branded goods to provide a cover for proceeds
of counterfeiting and other crimes; Bad criticism on chat lines and e-shopping websites about the quality of the goods
sold online;
14/s.5
4-6 May 11
INTERNET INVESTIGATIONS
The Internet is an important supply channel for counterfeiters: it allows them to supply products at both the retail and wholesale level.
The Internet guarantees anonymity While carrying out the inquiries, information and documents must betaken note of: Precise webpage address, through the URL (Uniform Resource Locator) Download the webpage in a digital support. By doing this, it is possible toverify its content and the existence of any business advertisement related tothe products or services offered through the webpage (banners) Take note of day and time periods during which the non-authorizedactivities are carried on IP (Internet Protocol) addresses from which the actshave been realized Download of products or services offered in the web (to test or productsto buy) Certification made by the rights’ owner, in which it is proved that theinvestigated portals are not authorized to carry out these activities Take note of nicknames of forum users, the ones who make unauthorizedexploitations.
15/s.5
4-6 May 11
INTERNET INVESTIGATIONS Operation Ocean Crossing, (February 2005)
The U.S. Immigration Customs Enforcement discovered a tradenetwork of counterfeit medicines originating from China and directedtowards the US, the UK and other European nations.The trade was managed by a Chinese criminal organization that waslinked to an American citizen.
Three Chinese citizens operating in the province of Tianjin were arrested andthe following was seized: more than 55,000 packages of counterfeit Viagraand Cialis, 75,000 loose pills, a device used to seal pharmaceutical packagesand a significant amount of counterfeit trademarks bearing the Viagrainscription.
In September 2005, a police operation was implemented in three facilitieswithin the region of Henanth.
This operation led to the arrest of eight Chinese citizens and the seizure ofmore than 222,000 pills of counterfeit Viagra, 70,000 loose pills, 260kilograms of raw materials and 580,000 counterfeit Viagra trademarks.
At the same time, U.S. authorities arrested a US citizen who subsequentlypleaded guilty to the charge of importing counterfeit drugs.
16/s.5
4-6 May 11
ANTI-COUNTERFEITING TECHNOLOGIES I)Since there are many techniques to conceal counterfeit products and to makethem increasingly hard to be distinguished from the original ones, a variety of detecting measures have been elaborated in the recent years.
Two Australian chemists developed a new rapid forensic test for authenticating antique porcelain after discovering that all porcelain has its own unique ‘fingerprint’. The technology involves a laser sampling technique to determine the unique signature of the clay from any porcelain object to be authenticated.
Bayer CropScience launched its Qualidate fingerprint authentication technique, a new patented technology based on approved food additives developed to protect crop protection products.
In 2008 a new tool in the fight against counterfeit wine was launched, a particle accelerator that can authenticate a wine bottle’s age and detect counterfeits. This technique analyzes the composition of the bottles: the analysis focuses on the bottle’s glass and not its contents, thus the bottle can remain sealed during the test. The process does not harm the bottle in any way. The test results are then compared with information in a database to ensure their provenance.
17/s.5
4-6 May 11
ANTI-COUNTERFEITING TECHNOLOGIES I)
Sanofi-aventis inaugurated its Central Anti-Counterfeit Laboratory which has a three-fold remit in respect of reducing the threat of counterfeit drugs.. conducting direct examinations of packaging items and leaflets as well as definitive chemical tests on suspect samples of commonly counterfeited products;. developing test methods and. distributing them globally.
17/bis
4-6 May 11
ANTI-COUNTERFEITING TECHNOLOGIES II)Authentication technologies, are an important tool for the
identification of a counterfeit product, and serve a source of evidence in court Markings are of four categories: overt (visible to human eye), hidden (elements incorporated into overt features or packaging
which are visible to human eye by means of tools such as reactive pens, laser pointed tools, optical filters or UV lights),
covert (elements which can only be detected with specific detection devices),
forensic (elements which can only be detected by means of an infield kit or through a laboratory analysis which allows for a more comprehensive analysis).
Track and trace technologies are used to follow and analyse the movement of products through supply chains and hence can help enforcement agencies during investigations.
They provide barcodes or radio frequency identification (i.e. an automatic identification method which is incorporated into a product and is transmitted through radio signals).
A good practice is GS1 Standards: they use RFID technology within barcodes to manage shipments, inventories & assets and to reduce counterfeiting.
18/s.5
4-6 May 11
INTER-SECTORIAL COOPERATION IN POLAND A, special inter – ministerial working groups has been established to
counteract infringements of IPR. The main groups are specified hereinafter:1. The Team for Counteracting Infringements of Copyright and Related
Rights, main tasks: coordination of activities of government bodies and services within the
framework of combating crimes against copyright and related rights. presentation of semi-annual and annual report on the copyright and related
rights law to the President of the Council of Ministers – in the form of a; presentation of the 2008-2010 “Programme for the protection of copyright and
related rights in Poland”; development of proposals for legislative amendments leading to a more
effective enforcement of copyright and related rights law; periodic evaluation of the progress of actions within the scope of combating
the infringements of copyright and related rights.Within this team, an Internet Group was also established. Its main
achievements are:a) creation of Dedicated Portal for Knowledge Management to solve problems and
to transfer information about infringements, new technologies, etc.b) development of effective methods of conduct aimed at reducing piracy on the
web.
19/s.5
4-6 May 11
INTER-SECTORIAL COOPERATION IN POLAND
2. The Team for Counterfeit Medicines. The role of the Team is to undertake activities which are supposed to contribute to minimize trade with counterfeit medicinal products, medicines sold in places which are not intended for distribution, as well as with counterfeit dietary supplements. The main areas of activities are:
operational activities awareness activities legislative work.
Source: Team for Counteracting Infringement of Copyright and Related Rights (2009), Special Report
20/s.5
4-6 May 11
INTERNATIONAL COOPERATION I)International Agreements1. EU-US Action Strategy for the Enforcement of IPR (2006), main
goals:1. Promote enforcement of related laws by customs/border control officials2. Strengthen cooperation among the parties3. Promote public-private partnership.
2. The EU-China Project on the protection of the IPR (2007) defines which technical assistance shall be provided by EU to China:1. The training of customs officers2. The exchange of expertise, best practices, know-how3. Cooperation between a network of authorities4. Technique for a more effective enforcement of IPR regulations
3. According to the Agreement on Trade, Development and Co-operation between the European Community and its Member States and Republic of South-Africa, (2000), the Community may provide technical assistance to South Africa in:
the preparation of laws and regulations for protection of IPR the establishment and reinforcement of domestic offices and other
agencies involved in enforcement and protection, including the training of personnel.
21/s.5
4-6 May 11
INTERNATIONAL COOPERATION I)
4. According to the Framework Trade and Co-operation Agreement between the European Community, its Member States and Korea, (2001), parties should:
respect the obligations contained in multilateral IPR conventions integrate the TRIPS within their national legislations facilitate cooperation between customs authorities.
21/bis
4-6 May 11
INTERNATIONAL COOPERATION II)International Operations
1. Joint Customs Operation “Infrastructure” November/December 2007 First IPR enforcement operation undertaken by CBP and the EU Reinforced the EU-US Action Strategy for the Enforcement of IPR Cooperation and exchange of information on counterfeit goods between EU and
US Customs 360,000 counterfeited integrated circuits bearing over 40 different trademarks
were seized2. Joint Customs Operation “Diabolo II” Signed by al 27 EU Members and 13 Asian countries; organized and coordinated
by the European Commission Focused on containers shipped from Asian ports of loading to EU ports of
discharge Seizure of more than 65 million counterfeited cigarettes and 369,000 other
counterfeited goods bearing 20 different trademarks3. Operation “Mamba” First combined INTERPOL and WHO operation targeting counterfeit medicines. Carried out by IMPACT, in Uganda and Tanzania Multiple law enforcement agencies joined their efforts to confiscate counterfeit
medicines Training course on methods and procedures of anti-counterfeiting to support
cross-agency efforts to combat transnational organized criminals An investigative guide produced by the Permanent Forum on International
Pharmaceutical Crime was also distributed.
22/s.5
4-6 May 11
THE ROLE OF THE PRIVATE SECTOR
In order to cooperate with law enforcers for a stronger intellectual property protection, the private sector should follow the following steps:
conduct a thorough investigation document all investigative steps preservation of evidence contact law enforcement agencies without delay assist in the identification of stolen intellectual property: share the results of internal investigations or civil lawsuits
with law enforcement participate in law enforcement task forces help train law enforcement authorities register IP by ‘privates’: help Customs to be helped by them: help train customs official: responding to inquiries regarding suspect goods following up on seizures
23/s.5
4-6 May 11
The Interpol member countries working within the INTERPOL IPR Programme
24/s.5
4-6 May 11
The INTERPOL Database on International Intellectual Property (DIIP) Crime
is an autonomous iBase database containing information abouttransnational and organized intellectual property (IP) crimes.
25/s.5
4-6 May 11
COOPERATION INITIATIVES WITHIN THE BUSINESS SECTOR
1) Liaisons between EU Commission, EU customs administrations and pharmaceutical sector
A first meeting in Brussels, September 20009 Main issue discussed: the effectiveness of seizures of suspect goods
carried out by customs at EU borders EU customs authorities decided to extend and improve their
collaboration with EU pharmaceutical companies in order not to hinder the legal drugs trade through the detainment of suspected products
Customs should notify EU pharmaceutical companies about each case of goods suspected of IPR infringement.
2) Liaisons between Custom authorities and the semiconductor industry
The Liaison, in action since 2009, covers China, Chinese Taipei, European Union, Japan, Korea and the US
The liaison regards customs experts and manufacturers of semiconductor devices concerning anti-counterfeiting issues
Customs experts reaffirmed the need for governments to join forces and increase joint government/industry cooperation in the fight against counterfeit industry
An important countermeasure is providing customs officers with the access to information about products manufactured and processes implemented by the semiconductor industry.
26/s.5
4-6 May 11
EXISTING GOOD PRACTICES IN EU ON ASSET RECOVERY
Asset recovery is a very recent field of international activity in countering different crimes. It involves an efficient and effective criminal justice system, sound preventive polices and transparent financial regulations.
Some EU countries legislations foresee such measures. In Austria, for example, for what concerns the civil remedies, and in
particular the proceedings on merits, “(b)“in case of negligence, the payment of damages – including lost of profits and moral damages – or the handing over of any asset made by the infringement” is foreseen.
In Belgium, the civil measures adopted deal only with the seizure – during the preliminary proceedings – of counterfeit goods, proceeds generated by illegal activity, personal or real goods of the suspected infringer and the freezing of the infringers’ bank account. As far as the damages within the proceedings on merits concern: “(c) the confiscation of all profits made by the unauthorized use of registered trademark” is stated.
In Estonia, under the civil law holders may claim compensation for damages, whether it is material or moral. Material damages may include damage to assets and loss of profits.
In the Czech Republic, within the proceedings on merit there can be the removal action and destruction of infringing goods, and in order to calculate damages the court shall consider the profits obtained through the violation of the law.
27/s.5
4-6 May 11
ADMINITRATIVE AND JUDICIAL BEST PRACTICESCORRECTIVE MEASURES INVOLVING COUNTERFEIT GOODS
1. Destruction of counterfeit goods Destruction of goods infringing IPR should be the general principle In civil proceeding, costs of destruction should be paid by the infringer In criminal proceedings, destruction costs are born by the State Practices vary country by country: e.g., in Greece destruction costs are
born by State, in Belgium, Luxembourg and the Netherlands the destruction is a penalty and is imposed on the offender.
2. Secondary use of counterfeit goods The infringing items can also be donated to charities, recycled or reused Some precedents exist in Estonia, Denmark, Germany, Hungary, Italy,
Portugal, Romania, Sweden and UK while it is prohibited in France, Greece, Latvia, Belgium, Netherlands and Slovenia
In Denmark, Germany, Hungary and UK the secondary use is not allowed in customs proceedings.
3. Definitive removal of counterfeit goods from the channels of commerce
In order to be destructed, fakes must be removed from commercial channels
Compared to market recall, that is temporary measure, this is definitive and aimed at the destruction of goods
28/s.5
4-6 May 11
ADMINITRATIVE AND JUDICIAL BEST PRACTICESCORRECTIVE MEASURES INVOLVING COUNTERFEIT GOODS
In many countries, when goods are already in the market, the infringer shall inform all customers on the infringement and offer them the possibility to sell back the fakes (Netherlands) and/or give back goods to the infringer at his own expense (Germany)
In other countries (UK), the order of Court to destroy the goods applies irrespective of whom holds the product.
4. Recall of counterfeit goods from commerce channels Recall of fake goods is temporary or precautionary measure This implies goods can be reversed or marketed again after the IPR
will expire According to EU Counterfeiting and Piracy Observatory: “This
interpretation seems to be inconsistent with the deterrence purpose of the measure. It gives the infringers the chance of retaining part of the economic benefit from the counterfeiting activity”.
Thank you!www.unicri.it
http://counterfeiting.unicri.it/