Domestic laws do not always acknowledge the serious and international nature of counterfeiting offences. However, creative use of two UN conventions can allow prosecutors to tackle counterfeiting as an aspect of transnational organised crime Counterfeiting is often not viewed as a serious offence under domestic criminal law-often because the crime’s transnational elements are ignored and national prosecutions therefore focus only on the activity that takes place within a single jurisdiction, normally at the borders or the end of the supply chain (ie, the sale of counterfeit products). As such, counterfeiting offences seldom attract penalties harsh enough to act as a sufficient deterrent. This ignores the connection between counterfeiting and transnational organised crime, which supports the illegal trade not only of branded products, but also of illicit goods (eg, arms and drugs) and unregulated products that can affect consumer health and safety. This article proposes an approach to prosecuting counterfeiting offences within the ambit of transnational organised crime, where the necessary links are made through effective national investigation and through international cooperation, namely mutual legal assistance (MLA) and extradition. ‘Transnational organised crime’ refers to the involvement of a criminal group and the commission of an offence that is transnational in nature. The UN Convention on Transnational Organised Crime (UNTOC) defines an ‘organised criminal group’ as a structured group of three or more persons that exists for a period of time and acts 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 or indirectly, a financial or other material benefit. An offence is transnational in nature if it: • is committed in more than one state; • is committed in one state, but a substantial part of its preparation, planning, direction or control takes place in another state; • is committed in one state, but involves an organised criminal group that engages in criminal activities in more than one state; or • is committed in one state, but has substantial effects in another state. When examining these elements, it becomes evident that counterfeiting is a transnational offence. In addition, organised criminal groups are involved in the global trade in counterfeit products. Such groups involve a number of players – from those manufacturing the counterfeits to those responsible for their distribution, import and export, transport, storage and sale. Investigations should therefore attempt to identify and connect all players involved in order to dismantle the entire group. The criminal groups involved in illicit trade tend to diversify: from historically specialising in one sort of crime, they have now evolved into multi-branched companies, operating in drugs, pharmaceuticals, tobacco products, precious stones and arms. However, while the goods may have changed, the methods and processes used are essentially the same (eg, diversion, use of free trade zones, use of falsified and/or forged documents, bribery and corruption and money laundering). There are two possible approaches to prosecuting those involved in counterfeiting offences. The first addresses the tip of the iceberg. It is often faster and brings more immediate results in terms of facilitating seizures and arrests, halting counterfeiting activity and securing payment of damages. However, it results in only a temporary stumbling block for the manufacturers of counterfeit goods and those involved in the illegal supply chain. The other approach is to go after the masterminds – that is, to attempt to disrupt the organised criminal groups which profit from the counterfeiting business. This is time consuming and needs both perseverance and adequate resources. While recognising the difficulties of this latter approach, it does appear to be the only means of addressing the root of the problem. This article explores the existing international legal framework and its utility, and then discusses legal and institutional challenges in investigating and prosecuting IP crime and other criminal law approaches at a domestic level for immediate use. Evidence and fugitives located abroad: extradition and MLA International cooperation is key for the successful prosecution of transnational cases of organised crime in terms of investigating, obtaining evidence and securing extradition. At the same time, it is necessary to recognise that there is no globally applicable international instrument to support states in criminal investigations and/or international cooperation in criminal matters relating to IP infringements. While the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) contains a section on criminal procedures (requesting states to apply criminal remedies to infringements committed on a commercial scale), it sets out no cooperation mechanism in criminal matters (Article 61). As for the Anti-counterfeiting Trade Agreement, the prospect of this ever entering into force appears slim. Even if this does happen, the act does not offer a dedicated platform for international cooperation in criminal matters either. While it contains more extensive provisions on criminal enforcement than TRIPs, Chapter V (international cooperation) limits itself to promoting cooperation among states generally by referring to existing international agreements (Article 33 2(2)(3)). Two recently adopted treaties might open up some interesting avenues: the 2012 Protocol to Eliminate Illicit Trade in Tobacco Products and the 2011 Council of Europe Convention on the Counterfeiting of Medical Products (‘Medicrime Convention’). In addition to addressing counterfeiting directly, they set out dedicated mechanisms to facilitate international cooperation in criminal matters, notably through extradition and MLA provisions. However, their value as sectorspecific instruments also limits them, in that they cannot be used as bases for international cooperation against the counterfeiting of other types of goods. Also, the Tobacco Protocol does not technically oblige state parties to criminalise the counterfeiting of tobacco products. In theory, states could comply with treaty obligations simply by adopting administrative sanctions, with the result that the extradition and MLA provisions of the protocol would not apply in relation to the unlawful conduct for which the administrative approach was chosen. On the other hand, the Medicrime Convention’s applicability is limited regionally. For the time being, neither treaty is available for use, as they have not yet entered into force. Pending the entry into force of these conventions, national authorities looking for effective legal bases to obtain assistance from foreign authorities to investigate IP offences are left with the following options: • Cooperation on the basis of courtesy and/ or reciprocity – apart from cases where the requested state needs a treaty in order to provide assistance to a requesting state, this channel can be and is often resorted to. On the other hand, the requested state has full discretion to reject requests: obtaining the evidence depends exclusively on the goodwill of the requested state and the terms of its domestic laws. • Cooperation through general bilateral or regional extradition and MLA treaties – counterfeiting offences fall within the scope of these treaties, as long as they are punishable above certain minimum thresholds. The advantage of resorting to these instruments is that they are often tailored to suit the cooperation needs of two countries (in the case of bilateral arrangements) or a small, often homogeneous group of countries (in the case of regional arrangements). Also, their broad scope makes them useful when counterfeiters are sought for offences other than counterfeiting, which form part of, or are the direct consequences of, their criminal schemes (eg, tax fraud, money laundering, illicit enrichment). The disadvantage is that their use is limited if the criminal operation under investigation has transnational elements involving other countries for which a particular jurisdiction has no treaty arrangement in place. • Cooperation through globally applicable criminal justice instruments, notably the UN Conventions Against Transnational Organised Crime and Corruption (UNTOC and UNCAC) – the usefulness of such instruments is manifold. First, they are in force and ratified by 179 and 169 states respectively, which makes them truly global cooperation platforms. In addition, they enable states to cooperate in a transversal manner by addressing two major modi operandi of counterfeiters, regardless of the targeted industry sector or goods. While UNTOC can be used against any “serious crime” involving an organised criminal group acting transnationally, UNCAC addresses a group of corruptionrelated offences that are almost invariably employed by counterfeiters to pursue their goals (eg, smuggling products or ensuring that law enforcement turns a blind eye to illegal manufacturing facilities). Last but not least, UNTOC and UNCAC appear directly relevant in the context of transnational investigations against counterfeiting offences in at least two ways: first, by ensuring that bank secrecy cannot be invoked as a ground to reject a request for MLA, and second, by providing for the possibility of submitting MLA requests with few formalities, in urgent cases even orally. This latter possibility is particularly attractive when counterfeiting takes place online, multiple jurisdictions are involved and requests for cooperation need to be executed without delay, sometimes within hours. In the absence of a globally binding, IP-dedicated international legal framework, international cooperation against counterfeiting offences highlights the importance for states to use all internationally available legal bases creatively. Sometimes more than one international legal instrument will be available. It then becomes necessary to choose the one through which results may be obtained in the most expedient and effective manner. Sometimes the best results will be obtained by applying legal instruments that were not specifically conceived to address IP crime (eg, UNTOC and UNCAC), but which nevertheless address their underlying causes or connected criminal activities. National prosecutions: the need to go beyond the strict IP offence The proffered views on utilising the available international legal framework are advantageous only if states are making the relevant connections between IP crime and transnational organised crime at a domestic level, which for the most part does not happen. The most telling sign of this is the offences under which states prosecute IP crime and illegal trade activity. While the facts of a case may fit a strict counterfeiting or smuggling offence under the relevant legislation within a jurisdiction, the same facts may also satisfy the elements of other related offences. There are a number of different ways that an offence with the same facts can be treated within a domestic legal framework, with many possibilities and interacting relationships. With regard to illicit trade, countries will often have three options regarding the arena in which a particular offence can be dealt with: customs, IP or criminal law. Most countries have legislation in all three categories, though with differing levels of effectiveness. Law enforcement officers tasked with investigating and laying charges, and prosecutors, should consider IP offences as a starting point. However, they should also look for other possibilities and relationships. When examining the illegal import/export of counterfeit or infringing products, it is necessary to explore provisions of the relevant trademarks and customs legislation in light of the facts. However, it is important to bear in mind criminal behaviours and related criminal activity which frequently accompany illicit trade and counterfeiting activity, and which will be covered in other legislation – such as a country’s criminal code (eg, bribery, illicit enrichment or forgery). Various types of charges can be laid with respect to a case with facts alleging counterfeiting activity and/or the illegal smuggling of counterfeit products. These include: • fraud offences, including: obtaining property or a financial advantage by deception; conspiracy to defraud; general dishonesty – obtaining a gain/ causing a loss; or obtaining financial advantage; • making false/misleading statements in applications and in documents; • unwarranted demands, with threats, of public officials or made by public officials; • corruption and related offences, including: bribery of national public officials; corrupting benefits given to or received by public officials; and abuse of public office; • forgery and related offences: using forged document (eg, shipping documents, bills of lading); possessing forged documents; possessing, making or adapting devices and so on for making forgeries; falsifying documents; and giving information derived from false or misleading documents; • membership of criminal associations and organisations: associating in support of serious organised crime activity; supporting a criminal organisation; committing an offence for the benefit of or at the direction of a criminal organisation; and directing the activities of a criminal organisation; and • money laundering. In order to prosecute under these offences, countries must first understand and appreciate that organised criminal groups participate in IP crime and illicit trade. In addition, they participate in illegally trading a range of goods, both licit and illicit, legal and illegal. Countries should be aiming to dismantle the organised crime groups involved and curb the illegal trade in counterfeit products. They should also be trying to deter participation in IP crimes, through successful prosecutorial outcomes and deterrent penalties. Understanding this is one of the keys challenges that states face. Once this takes place, more creative avenues will be available for prosecutors, where each element of an offence can be met and appropriate punishments can act as effective deterrents for offenders. Other challenges for states in terms of investigating and prosecuting include: • the political priority afforded to some crimes over others. Historically, IP crime has not garnered much political support and has been viewed as promoting private sector concerns over those of the state and its citizens. This can no longer be argued and governments are recognising the risks associated with organised criminal groups turning over huge profits, which then help them to engage in a range of illegal activities. In the end, it is the state and individuals that suffer; • a lack of experience and expertise in certain criminal law areas. Some criminal offences, established under UNTOC and UNCAC, have only recently been introduced in some states and there is a lack of expertise among the police, prosecutors and judges in prosecuting under these charges. An excellent example of this is the offence of participation in an organised criminal group, established as a criminal offence under UNTOC. This is a relatively new offence in a number of jurisdictions and prosecutors – let alone the judges who hear and adjudicate these cases – do not always have the requisite experience to prosecute the offence. However, this is an exceptionally significant offence which can be used to establish links in jurisdictions between IP crime and the involvement of organised criminal groups – especially for jurisdictions that do not have legislation in place allowing for the prosecution of the leaders of organised criminal syndicates and their associates; and • the utilisation of international cooperation mechanisms for prosecuting IP crime and related criminal activity. First, international cooperation mechanisms are not intuitively utilised for IP crime offences. Second, due to the formalities involved, states are hesitant to begin the process for offences which are not considered serious enough. If states begin to utilise international cooperation for IP criminal cases, this will make it more likely that prosecutors will be able to meet the evidentiary burdens associated with prosecuting organised criminal activity under the criminal code. INTERPOL’s legal assistance programme States are not alone in the fight against IP crime and organised crime, and assistance can be sought from international organisations with expertise in the area. INTERPOL’s legal assistance programme aims to support states in setting up effective legal frameworks against illicit trade and counterfeiting, and in training all actors involved in the criminal justice process (ie, law enforcement officers, prosecutors, judges, central governmental authorities in charge of international cooperation) to help them better understand the problem and carry out effective prosecutions, including by familiarising them with the use of international cooperation mechanisms. The programme is entirely funded through voluntary contributions, including from the private sector. Continued reliance on these contributions is key to ensuring that an increasing number of countries are reached and to offer sustained training and specialisation in IP-related criminal justice issues.