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Anti-counterfeiting 2009 World Trademark Review

– A Global Guide Anti-counterfeiting 2009

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Contributing firm Casalonga Avocats

Authors pose a serious threat to the health of the designs, patents for biotechnological Caroline Casalonga and general population. Clothing and accessories inventions and certain aspects of copyright Karina Dimidjian-Lecomte have also shown a significant increase. and related rights have been harmonized. It In terms of overall quantities seized, China has also created the Community trademark remains the principal source of counterfeit (CTM), the Community design, the The latest figures published by the European products, with 79% of all articles seized Community-protected plant variety right Commission show that counterfeiting is a originating in China. In the pharmaceutical and Community-protected designations of growing phenomenon in the EU market. In sector, India and the United Arab Emirates origin and geographical indications. 2007 EU Customs seized more than 79 were the principal sources of counterfeit Discussions are also underway with regard million counterfeit and pirated goods and products (31% each), followed by China. to creating a Community patent. handled more anti-counterfeiting cases than Together, these three countries are the source The EU IP Rights ever before. A total of more than 43,000 cases of 80% of all counterfeit medicines seized. (2004/48/EC) harmonized the means of were dealt with in 2007, up nearly 17% from This chapter explains the simple steps enforcing IP rights in all EU member states. 2006. Compared to 2006, counterfeiting that all owners of IP rights in the European The objective of the directive is to ensure a increased in almost all product sectors. In Union should take in order to defend their high equivalent level of protection for IP addition to medicines, where counterfeiting rights effectively against counterfeiting and rights in all EU member states. increased by 51% compared to 2006, the piracy, in particular the filing of an Counterfeiting and piracy should be 264% increase in intercepted counterfeit application for action by customs punished effectively. The directive articles for personal care is a worrying trend. authorities in the 27 EU member states. approximates national laws with regard to: The statistics for 2006 showed an increase • evidence; of 70% over 2005 (to 128 million counterfeit Legal framework • provisional measures; and pirated articles seized) across most The legal framework for anti-counterfeiting • the calculation of damages; and industry sectors. This was particularly consists of both IP and customs statutes. • the reimbursement of legal fees. worrying for pharmaceutical products (up The European Union has harmonized 384% over 2005) and perfumes and cosmetics most national IP laws and created some The EU Customs Regulation (1383/2003) (up 141% over 2005), as these products can unitary rights at EU level. Trademarks, addresses customs action against goods www.WorldTrademarkReview.com Anti-counterfeiting 2009 – A Global Guide 27 Casalonga Avocats

suspected of infringing certain IP rights and • Community-protected geographical Measures and actions by national the measures to be taken against goods designations for spirit drinks; or customs authorities found to have infringed such rights. This • Community-protected plant regulation introduced common rules to variety rights. Measures prior to an application for action prohibit the free circulation, import, export, Unfortunately, not all companies will protect re-export or entry of counterfeit and pirated For non-Community rights – that is, their adequately by goods in the European Union. national, European or international rights systematically filing an application for The Customs Regulation is implemented (including national and international intervention with Customs. Nevertheless, the by Regulation 1891/2004, which provides: trademarks, European and national customs authorities can intervene on their • application forms for EU-wide and patents, copyright and related rights) – own initiative by suspending the release of national customs action; and the rights holder must file national suspected goods or detaining them for three • instructions on how to use the forms. customs applications for action with the working days, during which the rights holder relevant national customs may file a customs application in the relevant Both the national and EU-wide customs administration. country. If a declaration is not filed within applications and the procedure for the that period, the products will be released. detention of counterfeit goods by customs Filing an EU application have been harmonized in all the EU The second stage involves the rights holder Customs detention procedure pursuant to member states. There is no unified EU lodging a written EU application for action by an EU application customs entity, however. Rather, the Customs, asking the latter to seize the Customs may suspend the release of and national customs administrations of the 27 suspected goods. The advantage of the EU detain all products that appear to infringe member states: application for action is that a single the IP rights cited in the EU application. The • work together; application provides all designated EU customs authorities will inform the rights • are subject to common regulations; and customs authorities with: holder or its representative of the products • exchange information through a • a sufficiently detailed description of the detained. From the date on which the goods centralized information system. goods to which the IP right applies; and are detained, the rights holder has a non- • the particulars needed to contact the extendable 10-working-day period either to: However, EU customs practices still have rights holder at any time. • obtain an order, where applicable, that certain particularities in each member state. such goods be destroyed; or In addition, civil and criminal procedures In the application, the rights holder • initiate an infringement action before are different in each member state. indicates the Community IP rights the national court with jurisdiction. concerned and provides information on EU application for action by Customs the authentic goods, as well as any Customs will give the rights holder the The EU national customs administrations information that may help Customs to opportunity to inspect the suspected goods. have broad investigative and policing anti- determine whether the goods are genuine, When examining the goods, Customs may take counterfeiting powers, including the right to including: samples and, according to the rules in force in suspend release and to detain goods • a report on the differences between the member state concerned, hand them over suspected of infringing IP rights. They act authentic and infringing goods; or send them to the rights holder, at its express not only at the EU borders, but also across • information on the type of fraud; and request, for the purposes of analysis and to each member state. Any person transporting • the routes used by traffickers. facilitate the subsequent procedure. The products into or through the European samples should be returned on completion of Union must have documents evidencing the The rights holder must also agree: the technical analysis. In practice, in most genuine origin of such products. • to assume liability towards the persons cases, in order to save costs and accelerate the Before Customs can take any action subject to the seizure or destruction of procedure, customs officers take photos of the against alleged infringing products, the alleged infringing goods in the event suspected goods and forward them to the rights holder must have: that the procedure is discontinued rights holder for confirmation as to whether • obtained a Community IP right; and owing to an act or omission on its part, the products are counterfeit. • filed a written application for or if the products are subsequently Depending on national provisions on intervention by the customs authorities. found not to infringe IP rights; and the protection of personal data, the rights • to pay all costs incurred by keeping holder may request additional information IP registration goods under customs control, including on the origin, provenance and destination of The first condition for filing an EU application destruction costs. the suspected infringing goods. for action by the customs authorities is the If the rights holder takes no action, or if application or registration of a Community IP The EU customs application for action the products are not abandoned for right. The following rights may be referred to may designate all or only a particular destruction within 10 working days (or three in EU customs applications: number of EU member states. Filing the working days in the case of perishable • CTMs; request for action in all EU countries is goods), the customs detention procedure is • supplementary protection certificates; strongly recommended. The EU customs terminated and the products are released. • Community designs; application for action is the most efficient • Community-protected designations and least expensive tool against Actions by rights holder of origin; counterfeiting and piracy. • Community-protected geographical The application is valid for one year, Simplified procedure indications; renewable on an annual basis. Most member states have adopted the

28 Anti-counterfeiting 2009 – A Global Guide www.WorldTrademarkReview.com EU member state Additional requirement when Simplified procedure European Union filing an EU application for action under Article 11

Austria None required Available Belgium The application must be in Available French, Dutch or German. The customs administration may ask for a translation of the documents attached to the application. Bulgaria Available supplementary protection certificates or plant Cyprus Greek or Turkish translation Available variety rights, the declarant, owner, importer, required holder or consignee of the goods may request Czech Republic None required Available the release of the goods on provision of Denmark None required Available security if all customs formalities have been Finland None required Available completed. The security must be sufficient to France French translation of the Not available. For trademark protect the interest of the rights holder. application advisable matters, if the IP rights holder declares samples to be Remedies counterfeit, Customs will, in most The first measure in cases of counterfeiting cases, seize the goods and have is the destruction of infringing goods or them destroyed without the need their removal from commercial channels in for an action by the IP rights such a way as precludes injury to the rights holder. The destruction costs are holder. Any other measures should be taken paid by Customs to deprive the persons concerned of any Germany None required Currently not available as the economic gains. The destruction costs necessary provisions have not yet should not be borne by the member state been passed into German law concerned. When the defendant does not Greece Greek official translation required Available pay for the destruction costs, such costs Hungary None required Available should be paid by the rights holder. Italy Italian translation of the Available However, such practice is not harmonized application advisable and, in some member states, destruction Lithuania None required Available costs are paid by the state. Netherlands None required Available The EU IP Rights Enforcement Directive Malta Not available. The IP rights holder provides for EU harmonized measures, must file an infringement action procedures and remedies that shall be before the courts “effective, proportionate and dissuasive”. Poland None required Available When calculating damages, courts have to Portugal None required Available consider the negative impact of the Romania Available infringement, including not only loss of Slovenia None required Available profits, but also any unfair profits made by Spain Spanish translation required Available the infringer and any other elements such as Sweden None required Available moral prejudice caused to the rights holder by United Kingdom English translation required Not available. If the IP rights the infringement. As an alternative, the courts holder declares samples to be may grant the IP rights holder damages counterfeit, Customs will seize equivalent to the royalties that it would have the goods without the need for an received if the infringer had been a licensee. action by the rights holder. If no In addition, the court may order the appeal is filed by the importer or publication of the decision or extracts thereof other interested party, the in newspapers or magazines and on websites. products are destroyed Release of the products In all other cases – for example, where the ‘simplified procedure’ of Article 11 of the rights holder and must be preceded by the declarant, holder or owner objects or Customs Regulation, under which the taking of samples by Customs to be kept as contests the destruction of the products – products are abandoned for destruction evidence admissible in legal proceedings in the products are released if, within the under customs control without the need for the relevant member state. specified 10-working-day period, the rights a court decision. Under the simplified holder has not initiated legal proceedings to procedure, the rights holder informs the Legal infringement proceeding determine whether an IP right has been customs authorities within the 10-working- Criminal or civil proceedings are different in infringed under the law of the member state day period that the goods concerned each member state, with harmonized rules for where the products are detained. infringe its IP right(s) and provides such evidence, provisional measures, calculation of The table gives a short overview of EU authorities with the written agreement of damages and reimbursement of legal fees. customs practice in some member states. the declarant, the holder or the owner of the Two questions are addressed: suspected goods to abandon them for Preliminary measures • Is there any additional requirement destruction. Such agreement is presumed if The alleged counterfeit products will be kept when filing an EU application for action the declarant, holder or owner of the goods until the court issues its decision. The by Customs in the relevant member has not specifically opposed destruction conditions for storage depend on national state? during this period, which may be extended laws, but may not give rise to costs for the • Is the simplified procedure of Article 11 of by a further 10 working days. customs administration. the Customs Regulation available? WTR The destruction is carried out at the However, in the case of goods suspected of expense and under the responsibility of the infringing design rights, patents, www.WorldTrademarkReview.com Anti-counterfeiting 2009 – A Global Guide 29 Casalonga Avocats Biographies 5/7 avenue Percier, 75008 Paris, France Casalonga Avocats Tel +33 1 45 61 22 31 Fax +33 1 45 61 12 34 Web www.casalonga.com

Caroline Casalonga Karina Dimidjian-Lecomte Partner Partner [email protected] [email protected]

Caroline Casalonga has been practising IP Karina Dimidjian-Lecomte is a partner with law since 1993. She founded Casalonga Casalonga Avocats, one of the leading and Avocats, one of the leading and largest largest French IP law boutiques. With a BA French IP law boutiques, in 2005. from the University of Pennsylvania and a Casalonga Avocats is the litigation partner JD from the Georgetown University Law for Casalonga & Josse, an established patent Centre, Ms Dimidjian-Lecomte is admitted and trademark attorney firm. Ms Casalonga to practise in both France and in New York. graduated from Paris II, Panthéon-Assas Her practice includes trademark clearance and has a master’s in IP law. She has and prosecution, proceedings before the worked for a large US IP law firm in New Office for Harmonization in the Internal York and has an LLM degree from Cornell Market and the French Trademark Office, IP University. She has extensive experience in licensing, domain name disputes, anti-counterfeiting actions, including counterfeiting and customs actions, and customs actions and IP litigation. She is a trademark, design and copyright litigation. member of the International Trademark She is a member of the International Association, the International Anti- Trademark Association, the New York State counterfeiting Coalition, the International Bar Association and the Association des Association for the Protection of Praticiens du Droit des Marques et Intellectual Property (AIPPI), the European des Modèles. Communities Trademark Association and the Association des Praticiens du Droit des Marques et des Modèles.

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