Questionnaire on combating of infringement of intellectual property rights DG TAXUD

Transcription

1 Brussels, 10 September 2013 Questionnaire on combating of infringement of intellectual property rights DG TAXUD ECTA (European Communities Trade Mark Association) numbers approximately members, coming from all the Member States of the European Union with associate members from all over the world. It brings together persons practising professionally in the Member States of the European Community in the field of trade marks, designs and related IP matters. These professionals are lawyers, trade mark advisors, trade mark attorneys, inhouse counsel and others who can be considered specialist practitioners in these areas. In addition to having close links with the European Commission and the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OHIM), ECTA is recognised by WIPO as a non-government Organisation (NGO). The replies below were gathered by the Members of the ECTA Anti-counterfeiting Committee, which brings together IP specialists from all Europe. The replies concern the following countries: Austria, Belgium, Czech Republic, France, Ireland, Netherlands, Poland, Romania, Sweden Having strongly diverse membership, ECTA would like to also submit replies provided by our Chinese, Indian and Suisse Members in order to give broadest overview possible. ECTA Secretariat, Rue des Colonies 18/24, 9th Floor, BE- Brussels, Belgium Tel 32/ Fax 32/ ecta@ecta.org Internet A company limited by guarantee. Reg. in England and Wales No Registered address: Suite 1.3, Vernon House, Sicilian Avenue, London, WC1A 2QH, England VAT No. BE

2 Cooperation between Industry and Customs on combating infringement IPRs Survey in support of the IPRs Actions of the ASEM Customs Action Plan Austria: Organization name/country: Sonn & Partner Patentanwälte/Austria Yes (chamber of commerce IP forum, customs training forums). The simplified procedure runs smoothly in Austria and we do not encounter any substantial difficulties with regard to the application of the relevant legal provisions. N/A. From our perspective, co-operation with Customs is well-established and runs effectively. a) Legitimate supply routes? - b) Known supply routes for counterfeit goods? - c) Others (Please specify): Both of the above if we are aware of legitimate and/or counterfeit supply routes, we do inform Customs accordingly. 2

3 Belgium: Organization name/country: Hoyng Monegier / Belgium Yes. I find that the Belgian customs authorities are very professional, efficient and also transparent and open in their communications. The customs authorities seem to have more difficulties in intercepting infringing goods compared to the past. By specific trainings given by holders of intellectual property rights with respect to the specificities of types of infringements, suspected third parties and nature of the infringing goods. a) Legitimate supply routes? Yes, on behalf of our clients we provide the customs authorities information with regard to the legitimate supply routes so as to enable them to act more efficiently. b) Known supply routes for counterfeit goods? Yes, see above under a). c) Others (Please specify): We also give the customs authorities lists of known licensees and known infringers, again on behalf of our clients. 3

4 Czech Republic: Organization name/country: TRAPLOVA HAKR KUBAT Law and Patent Offices, Czech Republic Yes. Mutual cooperation between customs and representatives of IP holders in regard seizures or suspicion on counterfeit goods works excellently. Customs in the Czech Republic country are very active, their flexibility in regard providing samples of counterfeit goods as well as communication is on a very high level. No serious challenges in dealing with Customs are in the Czech Republic. The only challenge is keeping the samples of counterfeits for our clients for their training purposes however caused by the Czech legislation. As our cooperation with Customs is perfect, we have no other comments on this topic. a) Legitimate supply routes? Yes. b) Known supply routes for counterfeit goods? No. c) Others (Please specify): We usually provide customs with specification of differences between genuine and counterfeit goods. 4

5 Czech Republic Organization name/country: Schoenherr s.r.o./ Czech Republic Yes. As we can see from the report published by customs in Czech Republic which deals with a number of seizures from January to June 2013, the most common is infringement on intellectual property rights related to such goods as a clothes, shoes, toys and electronics. These goods most frequently come from China and are usually transported in maritime containers. All together it makes more than six hundred thousand of seized goods, what is to be rated positively. The similar success could be noticed in the field of combating against internet criminality. We deem this activity of Customs as very positive. The IP owners must deal with many obstacles in the frame of setting a representative or when prolonging a representative s right to represent. As an example might serve limited time period of effectivity of power of attorney, which shall be therefore prolonged every single year. This whole procedure should be simplified. The priority should be to strengthen co-operation among all border regulatory agencies, including the exchange of information and experience. Whereas in case of need also to provide interaction between the Czech and foreign customs (especially on the Czech and German border). However some of these steps have been already done there is still a place for improvement. The possible way could lie in stronger engaging of the Czech Trade Inspection Authority and Ministry of Industry and Trade (RAPEX agency). Last but not the least is necessary to enhance public awareness in the terms of ability to distinguish counterfeit from original. a) Legitimate supply routes? b) Known supply routes for counterfeit goods? c) Others (Please specify): Identification of counterfeits goods 5

6 France: Nom de l entreprise / pays : Chanel / France 1. Quels aspects dans votre collaboration avec les douanes en France, fonctionnent de manière satisfaisante? De manière générale, la collaboration avec les douanes dans le cadre de la lutte anti contrefaçon fonctionne de manière très satisfaisante. Les douanes ont un accès aux informations concernant nos produits, connaissent leurs interlocuteurs au sein de notre département, nous adressent les informations suffisantes pour nous permettre de réagir. La communication par ou par téléphone fonctionne très bien et nous avons l'occasion plusieurs fois par an de présenter notre stratégie et nos problématiques en matière de contrefaçon (séminaires de formations organisés avec l'unifab). La Direction Générale des douanes est également très disponible et ouvert à un dialogue constructif. 2. Quelles difficultés rencontrez-vous dans votre collaboration avec les douanes? Pas de difficulté notable. Les conséquences de la décision Nokia Philipps demeurent gênantes. 3. Comment pensez- vous que la collaboration avec les douanes pourraient être améliorée? - Tenue de réunions ponctuelles d'échange d'information. - Formations douanes plus nombreuses. 4. Echangez-vous toujours avec les douanes sur : a) Les routes d approvisionnement? Oui. b) Les routes connues des contrefaçons? Oui. c) Autre (Merci de préciser): - 6

7 Ireland : Organization name/country: DFMG Solicitors, Ireland While progress has been made recently in this area, most notably with the formation of the IP Committee of the Law Society of Ireland and the Irish branch of the Anticounterfeiting group, the channels of communication between businesses and customs could still, in our view, be improved. There is still no official forum in which the various players involved in protecting IP rights can voice there concerns and the onus remains on the rights holders to make contact with Customs to ensure their voices are heard. Customs will often send photographs of goods suspected of infringing intellectual property rights to rights holders in order for them to determine whether their rights have been infringed. This often results in a quick and cost-effective confirmation that the goods are indeed counterfeit. Unfortunately, whether due to issues of resources or otherwise, we sometimes have problems with Customs when it comes to them providing information on the consignor/consignee of a consignment. It is not unusual to get a blurry photo showing these details as opposed something in writing. This can be extremely frustrating if the right holder wishes to rely on such information at a later stage. More open channels of communication, formation of more groups combining members from Customs and rights holders, more information seminars where both sides can appreciate the difficulties the others are having and can also learn about current trends in counterfeiting. a) Legitimate supply routes? No b) Known supply routes for counterfeit goods? No c) Others: - 7

8 Netherlands: Organization name/country: Legal Experience (Attorneys-at-law) N.V. / The Netherlands As a lawyer I m not a part of forum business-customs forums and working groups relating to IPR, so all of my answers are based on my personal experience. In general there exists a good co-operation between Dutch Custom authorities and IPR owners or their representatives. Recently (end of July) Dutch Customs made public that in million counterfeit goods have been seized in This is compared to in which year 3.3 million counterfeit goods were seized - a serious decrease. A representative of the ministry of finance (responsible for customs) stated that the decrease is caused by the fact the quantities of each seizure have dropped dramatically. In fact there have been more seizures in 2012 (9700) than in 2011 (9500). Dutch company React - representing numerous brand owners - replied to the aforementioned statement that the trade in counterfeit products has not decreased but has shifted to webshops and that Dutch customs is not doing enough to fight counterfeiters. This shows that there is still a lot work to be done by IPR owners and governmental organizations. Distribution of information in order to asses whether there is an infringement or not and communication in general. Dutch custom officers are in general co-operative. The constant lack of resources at the Custom to act against counterfeit goods. Difficulty to convince Dutch Customs and Public prosecutor to act on basis of criminal law against large scale counterfeit traders. The training of Custom officers in order to be able to asses whether a product is counterfeit or not (also relates to the quality of counterfeit products that gets better every year). By defining the general needs and problems of all IPR owners, making clear what the worldwide trends are in respect of trading in counterfeit and generate (through lobbying) more resources for customs authorities. 8

9 a) Legitimate supply routes? Yes. b) Known supply routes for counterfeit goods? No. c) Others: Poland : Organization name/country: JWP Patent & Trademark Attorneys; Poland From our point of view law firm yes. However, we are of the opinion that the right holders (small and medium-sized businesses which predominate in Poland) still do not possess enough knowledge about the possibilities of IPR border protection by customs authorities. Therefore, more business-customs forums concerning border measures for IPR protection should be organized. Cooperation with Customs authorities - after seizure of the goods and in connection with destruction procedure - we assess it very well. In our opinion there is a need of harmonization of requirements among customs offices because some practical aspects of the procedure sometimes vary between offices. We are of the opinion that our co-operation with Customs authorities is very good and fruitful. However, to make it even more effective, we should persuade the right holders to pay more attention to the need of IPR protection at the border. If the right holders do not wish to take any action, Customs will not even have an opportunity to apply a more effective protection against counterfeit items. a) Legitimate supply routes? Yes, we try to indicate legitimate supply routes in applications for customs action filed with the Customs Chamber in Warsaw. 9

10 b) Known supply routes for counterfeit goods? Yes, we try to indicate known supply routes for counterfeit goods in applications for customs action. c) Others : - Romania: Organization name/country: Cabinet M. Oproiu, legal representatives/romania Yes. Communication with Customs Authority and Border Police Customs have a problem in locating the representatives of the proprietors for exofficio actions when the proprietor does not have (yet) a representative. For the time being, no practical suggestion. a) Legitimate supply routes? b) Known supply routes for counterfeit goods? Yes. c) Others (Please specify) : - 10

11 Sweden: Organization name/country: Gozzo Advokater, Sweden YES. CONTACTS, DETENTION WORK, SEMINARS CUSTOMS FOCUSES ON WRONG SHIPMENT, SHOULD NOT FOCUS ONLY ON POSTAL SHIPMENTS BUT ALSO CONTAINER TRAFFIC MORE FOCUS ON CONTAINER TRAFFIC BASED ON CUSTOM S OWN INTELLIGENCE. RIGHT HOLDERS DO NOT HAVE ALL TH EINFORMATION THAT CUSTOMS ASKS FOR. MORE COLLABORATION BETWEEN THE VARIOUS NATIONAL OFFICES a) Legitimate supply routes? No. b) Known supply routes for counterfeit goods? Yes. c) Others (Please specify):- 11

12 Switzerland: Organization name/country: FMP Fuhrer Marbach & Partner, Switzerland To fight against piracy the Federal Institute of Intellectual Property established with the ICC Switzerland (Swiss National Committee of the International Chamber of Commerce) in July 2005 the Swiss Anti-Counterfeiting and Piracy Platform. A variety of activities, such as promoting cooperation between business and federal agencies and educating the public, serve to fight the problem in a sustainable way. To our knowledge this platform is working well. Cooperation with the Swiss Customs is excellent. The Customs staff is helpful, reliable and efficient, and the fees have been very reasonable until now. For example, two-year monitoring costs only CHF 1, In our experience most collaboration works very well. Cooperation is good. Let s hope the charges remain the same. a) Legitimate supply routes? No, not yet. b) Known supply routes for counterfeit goods? No, not yet. In normal case the Customs indicates only the consigner and the consignee. c) Others (Please specify)? No. 6. Any other comments that you believe would be useful? It is very useful when Customs provides us with good photos of the confiscated goods by at no additional cost. Then we can quickly decide together with our 12

13 clients whether it is pirated goods or not. Consequently, most cases can be solved by sending photos, so that there is no need to send the goods. China: Organization name/country: FERRANTE INTELLECTUAL PROPERTY, CHINA Considering the peculiarity of the Chinese market and the size of the country, overall, we can assert that we are content with the current business-customs forums and working groups, although an higher number of working group addressed at discussing the laws and procedures will be welcomed. Currently, the main method for right owners or their registered agents to held meetings with Customs officials is through trainings which are normally organized once a year by most local Customs. Some minor ports organize said trainings less frequently. During those trainings details of the brands, methods for assessing counterfeits and current issues faced are discussed with front-line officials. China Customs are also rather willing to organize bilateral meetings between high rank officials and one right owner in order to discuss into more details specific issues faced, especially when there is a certain degree of confidentiality involved and it is not believed appropriate to discuss in presence of other right owners/agents. Actual workshops are normally organized by bigger Customs Directorates (ie Beijing, Shanghai): during these workshops Customs official divulge useful information on internal practices, assess case studies and are open to discussion and comments. At government level, meetings such as the EU-China IPR Working Group and Dialogue, are organized in order to address various legislative and political concerns. One of the core features of China Customs enforcements is that both import and export shipments/parcels are checked at Customs. This double-track mechanism allows, when a shipments of suspected counterfeits is inspected, to stop at borders counterfeits leaving China hence enabling right owners to limit the amount of counterfeits being exported. 13

14 During a recent meeting with Beijing, Shanghai and Guangzhou Customs it was confirmed that the majority of the seizures is made against goods intended to be exported from China, rather than imported into China. Although increasing efforts are paid by the China Customs to enhance protection at borders, the system may sometime be burdensome for foreign right owners. The deadline set for confirming the nature of the goods in cases of proactive seizures is of three working days. Considering the time difference between China and Europe and that fact that in the majority of cases a bond in Chinese Yuan is required in order to confirm the preliminary seizure, to allow more days for the procedure will be most welcomed. In addition, some Customs do not send to right owners or their authorized Customs agents pictures of the preliminary seized items (as they used to do in the past), tightening even more the effective time to verify and confirm the nature of the goods. The possibility of insert known infringers or repeated infringers into a black-list is currently allowed only by certain customs and it is not considered as an official list. On the other hand, it is possible to record with the General Administration of Custom of China (GACC) the authorized exporters/producers in order to smooth clearance (the so called white-list): to put in place the same official system of recordation of known infringers or repeated infringers will ease Customs front line officials inspections hence increasing the effectiveness of protection. Currently, it is possible to conduct some activities (ie. Customs recordation of rights and recordation of authorized suppliers) on the online system of the General Administration of Custom of China (GACC). Additional features such as online tracking of seizures progress would be welcomed: at present if the need of liaising with Customs arises, it can be mainly done via phone with the official in charge of the file. Considering that the official may not always be available and the tight deadline set for confirming seizures, a more systematic approach would benefit the whole system. Although the fact that China is such a large Country has often entailed difference in the system, to work toward a more uniform practice among the different local directorate would also be welcomed. a) Legitimate supply routes? Yes. b) Known supply routes for counterfeit goods? Yes. 14

15 c) Others (Please specify): Known port of export of counterfeits goods; methods used by infringer to conceal infringements etc. India: Organization name/country: M/s United Overseas Trademark Company, India Customs enforcement for Intellectual Property Rights (IPR) was introduced in India in the year 2007 and has revolutionized the protection and enforcement of IPRs ever since. Indian Customs laws are framed on the lines of World Intellectual Property Organization (WIPO) and World Customs Organization (WCO) and are therefore substantially TRIPS compliant. Since the inception of IPR Rules, our law firm has been constantly engaged with the Customs Authorities for its effective implementation thereto. Apart from persistent pursuance with the Customs and affecting a large number of custom Recordals, we conduct training sessions on product identification and deliver academic lectures to the Custom probationers, inspectors, appraisers and other officers under the able supervision and guidance of Commissionerates throughout the Indian Territory. Even though the primary role and focus of the India Customs Authorities is concentrated on revenue collection, their role in the anti-counterfeiting is constantly increasing and cannot be underestimated. In view thereof, it can safely be stated that Indian Customs is progressing towards a pro IP regime, but the situation is still far from content at the moment. Indian Customs have the following advantages: - In our experience Indian Customs Authorities are flexible to work with and have prompt pursuance. - Indian Customs authorities act suo-motu on the basis of their intelligence reports. It is generally the Special Intelligence and Investigation Branch or the Central Intelligence Unit or the Directorate of Revenue Intelligence, which informs us about the suspected counterfeit consignment interdicted at the territorial borders. - Apart from the administrative functions, the Customs Authorities are vested with complete powers to adjudicate the IPR dispute, which dispenses the requirement of going to the Courts and procuring orders for enforcement. 15

16 Some of the challenges in Customs dealings are highlighted below: - There are frequent transfers of the Customs Officials from one post to the other and from one port to another makes the coordination difficult. - Since the importer is given every chance to prove his case, there are show cause notices issued and hearings appointed in the matter, due to which of the consignment lies for months in the godowns of custom authorities and it ultimately delays in disposing the matter. - Since there are too many consignments imported and there is only a small percentage of the total consignments that can be examined, majority of the consignments containing spurious and counterfeit goods are passed unchecked. Some of the suggestions for improvement are: - More pursuance with customs authorities from the highest to the lowest level in the hierarchy; - Coordinate with the state intelligence and investigative agencies; - Sensitization of IPR Rules through training programs; - Conducting workshops on anti-counterfeiting laws and product identification of various a) Legitimate supply routes? Yes, we do engage customs on the legitimate supply routes, especially in cases of mis-declared goods. The Customs Department has to be intimated about the fakes arriving in the form of mixed goods containers through the legitimate supply routes. For example, the fakes/counterfeit cosmetics may be present in containers of toys without declaring that the container holds the cosmetics. The counterfeit medicines also arrive through legitimate routes numerous times in order to avoid getting tracked as the legitimate supply routes are difficult to track. b) Known supply routes for counterfeit goods? In India the known supply routes for counterfeit goods are primarily those coming from China or of late it has been noticed that counterfeit goods are taking a different route in form of goods going first to UAE from China and then coming to India-in order to camouflage their Chinese origin. It may further be noted that China remains the primary country where the suspected IPR infringing goods come from. In 2011, almost 73% of the total amount of articles infringing IPR came from China. Other countries which were the main source of supply for different product categories are Turkey, Thailand, Hong Kong. Further, goods coming from South East Asian countries are also suspected counterfeits a number of times. The map above shows the routes taken by counterfeit goods to enter India through different sea channels. 16

17 c) Others (Please specify): - 6. Any other comments that you believe would be useful? As India s economy continues to expand, the volume of goods imported and exported has increased substantially. This increase in trade has made it more difficult for Indian Customs to protect IP rights. Intellectual property laws, especially copyrights and trademarks entitle the IPR owner to take both civil and penal actions against the unscrupulous persons involved in the illegal trade. Although rights holders have criticized the organization in the past for failing to take IP seriously, Indian Customs is turning that around with a series of reforms that have introduced a sophisticated system to register IP and protect it at India s different ports. 17