Fighting Against Brand Counterfeiting in Three Key European Member States

Towards a More Comprehensive Strategy

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

4-6 May 11 1/op.

CONTENT OF THE COURSE

▪

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 indication

International Treaties, Agreements and Conventions

The Paris Convention

 

The Madrid Agreement TRIPS

Section 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 counterfeiters

Implication of organized crime

  The Palermo Convention The link with other serious organised crimes 4-6 May 11 2/op.

CONTENT OF THE COURSE

Section 3 - Counterfeiting at the European Union Level



Relevant EC Regulations and Directives



Remedies and actions against counterfeiting



Section 4 - Counterfeiting in Poland



Statistics and data on seizures of counterfeited goods at the EU borders Polish legislation



Current situation and estimates of the problem: seizures at EU borders; countries of origin; most commonly counterfeited products



Section 5 - Main concepts and suggested best practices



Civil and criminal sanctions in cases of counterfeiting Detection and identification methods



Investigation



Closing: Revision of concepts



Prosecution – Legal proceedings Application of concepts learnt

 

Management of skills and knowledge acquired Appraisal of the subjects studied

4-6 May 11 2/bis.

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.

4-6 May 11 3/op.

Section 1 Basic Definitions of IPRs and Treaties, Agreements and Conventions at the international level

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

4-6 May 11 1/s.1

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

Convention in the Berne 4-6 May 11 2/s.1

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

:

P

rotecting,

E

ncouraging,

R

ewarding 4-6 May 11 3/s.1



Fair use



Research



Education Exclusions

4-6 May 11 4/s.1

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

4-6 May 11 5/s.1

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

4-6 May 11 6/s.1

Differences between utility models and patents:

 Utility model requirements are

less stringent

patents than for  Term of protection for utility models is

shorter

patents than for  Patent offices

do not examine

prior to registration applications as to substance  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 4-6 May 11 7/s.1

Designs



Ornamental or aesthetic

aspect of an article  Applied to a

wide

handicraft variety of products of industry and  Industrial design is does not protect any technical features of the article to which it is applied.

primarily

of an aesthetic nature and 4-6 May 11 8/s.1

Designs 2



Unregistered Designs



Registered Designs



Industrial Designs

4-6 May 11 9/s.1

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

service a product or  Provides

protection

to the owner of the mark 4-6 May 11 10/s.1

Examples of Trademarks

4-6 May 11 10/bis

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 4-6 May 11 11/s.1

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)

4-6 May 11 11/bis

Copyright and Related Rights I The Berne Convention for the Protection of Literary and Artistic Work (1886)

▪ Legal basis for the protection of “literally and artistic

works”.

▪ Basic principles: i.) “national treatment” ii.) “automatic” protection iii.)“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

states) (164 member 4-6 May 11 12/s.1

Copyright and Related Rights II The WIPO Copyright Treaty (1996)

▪ Complementary legal tool of the Berne Convention on

two subject matters:

i.) computer programmes ii.) compilations of data or other material (“databases”) ▪ Grant to authors the exclusive rights of: i.) distribution ii.) rental iii.) communication to the public ▪ Creation of legal obligations for each Member State: i.) enforcement procedures ii.) 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) 4-6 May 11 13/s.1

Industrial Property I The 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 treatment ii.) right of priority iii.) common rules applying to all the categories of Industrial Property defined by the Convention iv.) repression of unfair competition ▪ Conditions for legislations;

filing

country of origin.

and

registration

▪ Trademark registered in a country  of trademarks  determined and regulated in each country by domestic considered independent of marks registered in the other countries of the UE, including the ▪ Poland is a contracting party of the Paris Convention states) (173 member 4-6 May 11 14/s.1

Industrial Property II The Patent Cooperation Treaty (1970)

▪

Simultaneous patent protection

patent application ▪ International mechanism patentability and grant of patent  by filing an "international" of

control

and

verification

of ▪ 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) 4-6 May 11 15/s.1

Industrial Property III The 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) 4-6 May 11 16/s.1

Industrial Property IV The 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) 4-6 May 11 17/s.1

Industrial Property V The 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

application filed in the country of origin based on a trademark

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

members)

and the Madrid Protocol

(83 members) (56 4-6 May 11 18/s.1

Industrial Property VI The Singapore Treaty on the Law of Trademarks (2006)

▪ Establishes

common standards

trademark registration and licensing ▪ Advantages: i.) allows national trademark offices to progress to an entirely electronic communication system as efficient alternative to paper communications for procedural aspects of 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 members) (22 4-6 May 11 19/s.1

Industrial Property VII The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958)

▪ Protection of appellations of origin ▪ Registration mechanisms contracting State

:

i.) Registration by the International Bureau of WIPO upon request of the competent authorities of the interested 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 4-6 May 11 20/s.1

The TRIPS Agreement

WTO Agreement on Trade-related Aspects of Intellectual Property Rights

▪

Introduction of IP rules into the multilateral trading system Attempt 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 IPRs iii.) enforcement of these rights at national level iv.) dispute settlement on IPR issues v.) special transitional arrangements during the period when the new system is being introduced 4-6 May 11 21/s.1

The TRIPS Agreement

WTO Agreement on Trade-related Aspects of Intellectual Property Rights

▪ Basic principles: i.) “national treatment” ii.) the most-favoured-nation treatment iii.) 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. 4-6 May 11 21/bis

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; 4-6 May 11 22/s.1

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 4-6 May 11 22/bis

IPR Administration

   

WIPO OHIM EPO National offices

–

National Patent and TM Offices

–

National Copyright Offices

–

e.g. Ministries of Agriculture for GIs

4-6 May 11 23/s.1

SECTION 2

Counterfeiting and Piracy and the Involvement of Organized Crime

Definition

According to the TRIPS Agreement

:

Counterfeit trademark goods

country of importation.”

: “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

Pirated copyright goods

importation.” : "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

4-6 May 11 1/s.2

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 4-6 May 11 2/s.2

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 authorization of the rights’ owner Does the notion of commercial purpose determine the piracy

(upload of copyrighted protected material online when the commercial purpose is often missing)?

4-6 May 11 3/s.2

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 4-6 May 11 4/s.2

Allusion and Expropriation

Allusion

: Goods very similar but intentionally not identical to those already commercialized on the market or to goods which recall other brands 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) 4-6 May 11 5/s.2

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’ work

PC: 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 crimes

Other types of financial crimes: currency counterfeiting, money laundering, payment/credit card fraud.

4-6 May 11 6/s.2

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

implemented in a preventive way to reduce the vulnerability of goods to counterfeiting.

ii. Costs as a consequence of crime

or losses incurred by victims as a consequence crime.

iii. Costs in response of crime

offenders.

: incur when measures are : correspond to any costs : are equivalent to expenses incurred for the detection of a crime and the prosecution of 4-6 May 11 7/s.2

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 4-6 May 11 8/s.2

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.

4-6 May 11 9/s.2

Types of Counterfeiters

(Staake and Fleisch)

Disaggregators:

of poor quality. Goods produced are easily made and are often

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:

violating custom laws.

they profit by avoiding tax and

Organised crime groups

4-6 May 11 10/s.2

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)

4-6 May 11 11/s.2

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

 Conspiracy  (art. 5)

Active participation in criminal activities

or other activities in the knowledge that participation contributes to the group's criminal aim of the organized group 4-6 May 11 12/s.2

Section 3 Counterfeiting at the European Union Level

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.

4-6 May 11 1/s.3

DIRECTIVE 2001/29/EC

EU Copyright Directive (EUCD) on the harmonization of certain aspects 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.

4-6 May 11 2/s.3



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. 4-6 May 11 3/s.3

COUNCIL REGULATION 1383/2003 ON CUSTOMS COOPERATION

  improvement of customs cooperation for the identification of goods infringing an IPR distinction between trademark identical or very similar to the registered one) and

“pirated goods”

copyright)

“counterfeit”

(goods unlawfully bearing a (unauthorized copies of a work protected by   applied when products infringe: a) a patent registered in one of the EU member States, and b) 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 4-6 May 11 4/s.3

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 

i.

ii.

iii.

Absence of a unified EU customs entity → member states to: commitment of the 27 work together be subject to common regulations 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.

4-6 May 11 5/s.3



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 4-6 May 11 6/s.3

DIRECTIVE 2004/48/EC

 

a) b) c) d)



(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: found in possession of goods infringing an IPR; commercially distributing such goods; providing services used in infringing activities; 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 2 → → assessment of the economic consequences suffered by the damaged party assessment of the economic value of the IPR and of the licenses.

4-6 May 11 7/s.3

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.

4-6 May 11 8/s.3

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 - intentional  - committed on commercial scale Interesting provisions  creation of joint investigation teams between Member States 4-6 May 11 9/s.3

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.

4-6 May 11 10/s.3

NUMBER OF REGISTERED CASES 1999 - 2009

Source: TAXUD

4-6 May 11 11/s.3

NUMBER OF ARTICLES DETAINED 1999 - 2009

Source: TAXUD

4-6 May 11 12/s.3

COUNTERFEIT MEDICAL PRODUCTS DETAINED

Counterfeit m edical products detained

Number of articles detained 14000000 12000000 10000000 8000000 6000000 4000000 2000000 0 2006 2007 2008 2009

Source UNICRI elaboration based on the TAXUD 2006-2009 reports

4-6 May 11 13/s.3

COUNTERFEIT MEDICAL PRODUCTS

Counterfeit m edical products

Number of cases 4000 3500 3000 2500 2000 1500 1000 500 0 2006 2007 2008 2009

Source UNICRI elaboration based on the TAXUD 2006-2009 reports

4-6 May 11 14/s.3

COUNTRIES OF ORIGIN

Source: TAXUD

4-6 May 11 15/s.3

 

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 4-6 May 11 16/s.3

Source: WCO

4-6 May 11 17/s.3

INCIDENCE OF COUNTERFEITING WITHIN THE EU BORDERS BASED ON SEIZURES

        Cigarettes Tobacco products Alcohol Perfumes Handbags Coats Football shirts Razor blades ▪ ▪ ▪ ▪ ▪ ▪ ▪ ▪ Wallets Medicines ▪ ▪ Pharmaceutical products Electronics Children's toys Branded hair straighteners ▪ ▪ Airline parts Olive oil Designer watches Scarves CDs and DVDs Cosmetics ▪ ▪ ▪ ▪ Toothpaste Shoes Branded condoms Perfumes 4-6 May 11 18/s.3

4-6 May 11 19/s.3

Section 4 Counterfeiting in Poland

NATIONAL LEGISLATION ON COPYRIGHT AND RELATED RIGHTS

Copyright is protected by:  The Copyright and Related Rights Act of 4 February 1994

In 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 4-6 May 11 1/s.4

NATIONAL LEGISLATION ON 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.

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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 4-6 May 11 2/s.4

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 4-6 May 11 3/s.4

SEIZURE OF COUNTERFEIT GOODS IN POLAND (2009)

Type of product

 Clothes     Cigarettes Shoes Food products and drinks Mobile phones and accessories         CDs, DVDs Electronic equipment Watches, jewellery and fancy goods Cosmetics Games, sports equipment, toys Pharmaceuticals and medical products Other goods Total

Quantity of Items

263,449 182,899 93,300 70,905 66,448 54,711 34,450 847,243 33,531 24,748 13,782 8,980 43,301 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

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OVERVIEW OF CASES AND ARTICLES PER MEMBER STATE

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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 4-6 May 11 6/s.4

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.

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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 4-6 May 11 8/s.4

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.

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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.

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Section 5 Main Concepts and Suggested Best Practices for Investigations

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.

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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?

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Additional info to be collected:

    

Companies

and

individuals

organised crime group.

involved in the production and distribution to recognize the possible involvement of an

Money transfers

tracking illicit trading flows and obtaining the seizure and confiscation orders could provide important evidences for

Real estate

chain and

property

also key points of the criminal Details and registration of

transport vehicles

or other

means of

used in production and distribution Details of

mobile communications

used and

IT hardware

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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.

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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.).

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            

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.

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The fake trainer is the one on the left, with the black Nike tick. 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

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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.

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INTERVIEW WITH INFORMANT/SUSPECT

1.

2.

3.

4.

5.

6.

7.

8.

9.

Conduct interviews in a location which reduces unnecessary interruptions or distractions.

Establish rapport with the person being interviewed to put him/her at ease.

Listen to the person. Let him/her first tell the story in his/her own way. Listen carefully to each side.

Be genuine and at ease.

After hearing the entire story, ask for more information to fill in details.

Ask for clarification of key points.

Note-taking may put the person being interviewed on edge.

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.

Watch for changes in attitudes, body language, hesitation in speech, etc. Describe your observations of body language and personal characteristics in your report.

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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 on average - some doubt, but past info has been reliable • Not usually Reliable been reliable on occasion - there is doubt, and past info has only • 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.

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HOW TO OPERATE?

  Gathering information concerning the episode: charges, written documents or complaints, interviewing, informed people and other counterfeiters’ customers; Paying close attention in acquiring the notitia criminis , by presetting information sources considered suitable;    Aiming to definition; conditions; detect the counterfeiting chain by activating each informative and investigation source whenever a criminal organization is involved, according to the Palermo Convention’s Contacting another law enforcement agency or a specialized organisation if the assigned abilities do not allow to delve into some fiscal aspects, or other issues concerning immigration or job Taking care data gathering to send to administrative centres in order to improve the implementation of the prevention and repression 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 with prejudicial consequences for the counterfeiter.

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   

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; 4-6 May 11 14/s.5

INTERNET INVESTIGATIONS

   taken note of:  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 be Precise webpage address, through the URL (Uniform Resource Locator)      Download the webpage in a digital support. By doing this, it is possible to verify its content and the existence of any business advertisement related to the products or services offered through the webpage (banners) Take note of day and time periods during which the non-authorized activities are carried on IP (Internet Protocol) addresses from which the acts have been realized Download of products or services offered in the web (to test or products to buy) Certification made by the rights’ owner, in which it is proved that the investigated portals are not authorized to carry out these activities Take note of nicknames of forum users, the ones who make unauthorized exploitations.

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INTERNET INVESTIGATIONS Operation Ocean Crossing, (February 2005)

The U.S. Immigration Customs Enforcement discovered a trade network of counterfeit medicines originating from China and directed towards the US, the UK and other European nations.

The trade was managed by a Chinese criminal organization that was linked to an American citizen.

Three Chinese citizens operating in the province of Tianjin were arrested and the following was seized: more than 55,000 packages of counterfeit Viagra and Cialis, 75,000 loose pills, a device used to seal pharmaceutical packages and a significant amount of counterfeit trademarks bearing the Viagra inscription.

In September 2005, a police operation was implemented in three facilities within the region of Henanth. This operation led to the arrest of eight Chinese citizens and the seizure of more than 222,000 pills of counterfeit Viagra, 70,000 loose pills, 260 kilograms of raw materials and 580,000 counterfeit Viagra trademarks. At the same time, U.S. authorities arrested a US citizen who subsequently pleaded guilty to the charge of importing counterfeit drugs.

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ANTI-COUNTERFEITING TECHNOLOGIES I)

Since there are many techniques to conceal counterfeit products and to make them 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.

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ANTI-COUNTERFEITING TECHNOLOGIES I)



Sanofi-aventis

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; inaugurated its Central Anti-Counterfeit Laboratory which . developing test methods and . distributing them globally.

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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.

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INTER-SECTORIAL COOPERATION IN POLAND



1.

     A,

special inter – ministerial working groups

has been established to counteract infringements of IPR. The main groups are specified hereinafter:

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.

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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

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INTERNATIONAL COOPERATION I)

International Agreements

1. EU-US Action Strategy for the Enforcement of IPR (2006), main goals: 1. Promote enforcement of related laws by customs/border control officials 2. Strengthen cooperation among the parties 3. Promote public-private partnership.

2. The EU-China Project on the protection of the IPR (2007) 1. The training of customs officers 2. The exchange of expertise, best practices, know-how 3. Cooperation between a network of authorities defines which technical assistance shall be provided by EU to China: 4. 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.

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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.

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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 

2. Joint Customs Operation “Diabolo II”

 360,000 counterfeited integrated circuits bearing over 40 different trademarks were seized 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 trademarks

3. 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.

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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 4-6 May 11 23/s.5

The Interpol member countries working within the INTERPOL IPR Programme

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The INTERPOL Database on International Intellectual Property (DIIP) Crime

is an autonomous iBase database containing information about transnational and organized intellectual property (IP) crimes.

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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. 4-6 May 11 26/s.5

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.

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ADMINITRATIVE AND JUDICIAL BEST PRACTICES CORRECTIVE 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 

2. Secondary use of counterfeit goods

 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.

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 4-6 May 11 28/s.5

ADMINITRATIVE AND JUDICIAL BEST PRACTICES CORRECTIVE 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”. 4-6 May 11

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