In recent years, counterfeiting and piracy have continued to evolve and to grow in scope and complexity. Statistics speak for themselves at the European level, as the European Commission reported in 2015 more than 80,000 instances of products being retained at the Union border due to suspicions of infringement of intellectual property rights, representing nearly 40 million products.
Companies are the first victims of this scourge, both in terms of image and economic losses. In addition, the Commission's report shows that all sectors of the economy are now affected: counterfeiters are no longer focusing exclusively on luxury goods, but have turned to a broad range of consumer products such as condoms, electronics or even automotive spare parts.
To effectively protect themselves against the counterfeit market, companies must adapt their organization and adopt a proactive stance in combating counterfeiting. Undeniably, co-operation with the European public sector is one of the most effective means of enforcing intellectual property rights today and offers three main courses of action:
1. The seizure of the domain names of websites that sell counterfeits;
2. The suspension of the release for free circulation of goods infringing intellectual property rights upon request by the rights holders;
3. The multiplication of the investigation powers of the competent authorities and their possibility to act towards organized networks of counterfeiters.
To this end, MLL law firm, via its office in Brussels, has developed close contacts with the European institutions, including the European Anti-Fraud Office (OLAF) and Europol, and has established privileged relationships with customs and police authorities in the Benelux, as well as throughout the European Union. In particular, Meyerlustenberger Lachenal has Expertise in:
1. The seizure of domain names:
Domain name seizure is the intervention instrument that allows rights holders to intervene the most upstream in the fight against counterfeiting and thus helps to prevent counterfeit products from being exported from or imported into the territory of the European Union.
Indeed, seizing attaching a domain name is a simple, effective and cheap solution to restrict access to a website, which offers for sale counterfeit products. In practice, it falls on the right holder to report to Europol, through a simplified procedure, any website likely to infringe on its intellectual property rights. Once alerted, Europol is responsible for forwarding the information to the competent local authorities, e.g., in France for ".fr" domains, which then initiate their own attachment procedure. Upon completion of this procedure, the website becomes inaccessible.
To date, 28 countries (namely, the majority of European countries, as well as the United States, Canada and Hong Kong) take an active part in operations aiming at seizing domain names, making it possible to eventually restrict access to websites that are designated by, among others, ".com", ".fr", ".be" or ".lu" domains.
Since 2013, rights holders, in collaboration with the European authorities, have been able to seize nearly almost 1000 websites
2. The suspension of the release for free circulation of goods infringing intellectual property rights:
In parallel of the seizure of the domain name, a right holder may rely on the task force of European customs authorities to intercept at the European Union border any and all goods that are suspected of infringing on their intellectual property rights.
To that end, it is recommended that rights holders lodge an application for intervention with their national – or European, if they own a European intellectual property right – customs authorities.
The lodging of such an application is not subject to any tax or commitment and presents the advantage of:
- bringing to the attention of the customs authorities of the existence of a potential counterfeiting risk on a certain type of product;
- providing information to the customs authorities that will eventually allow them to recognize a suspected counterfeit merchandise;
- communicating the contact details of the persons empowered to carry out formal identification of the goods and to assess their situation;
- preventing counterfeit goods from entering the European Union market;
- destroying counterfeit goods retained by customs authorities at a lower cost.
In practice, once the application has been lodged, the customs authorities inform the holder of any and all detentions of goods that are suspected of infringing on its intellectual property rights.
At this stage, the right holder is entitled to:
- Request the destruction of the goods, at the expense of the infringer, via a simplified procedure and only if the counterfeit nature of the goods attached is confirmed;
- Request that the professional secrecy of the customs authorities be lifted, i.e., by asking such authorities to disclose the identity of the infringer in order to undertake legal action against it.
Moreover, the rights holders through their customs application for action have the possibility to opt for the specific small consignments scheme (the Regulation defines 'small consignments' as mail or express mail, containing a maximum of three pieces, or weighing less than two kilograms). Under this procedure, customs authorities are entitled to destroy counterfeit products, without the explicit consent of the right holder. In practical terms, once the customs authorities have attached a package that satisfies the definition of 'small consignment', they will notify the declarant or the holder of the goods within one working day, while simultaneously notifying him of their intention to destroy the goods and briefly describing the subsequent procedure. This instrument is therefore particularly effective at the major European freight airports such as Liège, Amsterdam, Luxembourg, Paris and Frankfurt, where many small consignments containing counterfeit products transit on a daily basis.
3. The multiplication of the investigation powers:
Lastly, co-operation with the European public sector now allows holders of intellectual property rights to increase their means of action and of investigation both within the European Union Member States, but also in certain third countries, where counterfeits are produced. Through the intermediary of the European Commission and Europol, it is now possible to forward information to the customs authorities of the European Union so that the latter may carry out investigations across all Member States of the European Union, with the aim, inter alia, of dismantling organized crime networks. In light of the results of such investigations, it may also be possible to proceed with on-site verifications at the premises of the economic operators concerned by the investigations and / or to request the assistance of the competent customs authority of a third country on the basis of the agreements providing for mutual administrative assistance in customs matters that have been concluded between the European Union and certain third countries.
For example, since 1 January 2015 and in accordance with the EU-China Plan of Action on intellectual property rights, the customs authorities of the main Chinese ports and airports can transmit information to the European authorities. This presents the advantage of allowing for the identification of purchasers in China, who do not necessarily appear on the transport and/or import documents when the counterfeit goods are presented for customs clearance at the European Union border. This information may, among other things, allow rights holders to carry out actions directly against counterfeiting industries located in China.
The multiplication of anti-counterfeiting instruments under the applicable European legislation is falls squarely within the European Union's political agenda to fight counterfeiting, which it perceives as a major concern, in particular in the 2020 strategy. These instruments offer substantial opportunities for companies, which want to add value to their innovations by protecting their assets and intellectual property rights.