A Guide To Anti-Counterfeiting In Europe

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Article by Caroline Casalonga and Karina Dimidjian

The latest figures published by the European Commission show

that counterfeiting is a growing phenomenon in the EU market. In

2007 EU Customs seized more than 79 million counterfeit and pirated

goods and handled more anti-counterfeiting cases than ever before.

A total of more than 43,000 cases were dealt with in 2007, up

nearly 17% from 2006. Compared to 2006, counterfeiting increased in

almost all product sectors. In addition to medicines, where

counterfeiting increased by 51% compared to 2006, the 264% increase

in intercepted counterfeit articles for personal care is a worrying

trend.

The statistics for 2006 showed an increase of 70% over 2005 (to

128 million counterfeit and pirated articles seized) across most

industry sectors. This was particularly worrying for pharmaceutical

products (an increase of 384% over 2005) and perfumes and cosmetics

(an increase of 141% over 2005), as these products can pose a

serious threat to the health of the general population. Clothing

and accessories have also shown a significant increase.

In terms of overall quantities seized, China remains the

principal source of counterfeit products, with 79% of all articles

seized originating in China. In the pharmaceutical sector, India

and the United Arab Emirates were the principal sources of

counterfeit products (31% each), followed by China. Together, these

three countries are the source of 80% of all counterfeit medicines

seized.

This article explains the simple steps that all owners of IP

rights in the European Union should take in order to defend their

rights effectively against counterfeiting and piracy, in particular

the filing of an application for action by customs authorities in

the 27 EU member states.

Legal framework

The legal framework for anti-counterfeiting consists of both IP

and customs statutes.

The European Union has harmonized most national IP laws and

created some unitary rights at EU level. Trademarks, designs,

patents for biotechnological inventions and certain aspects of

copyright and related rights have been harmonized. It has also

created the Community trademark (CTM), the Community design, the

Community-protected plant variety right and Community-protected

designations of origin and geographical indications. Discussions

are also underway with regard to creating a Community patent.

The EU IP Rights Enforcement Directive (2004/48/EC) harmonized

the means of enforcing IP rights in all EU member states. The

objective of the directive is to ensure a high equivalent level of

protection for IP rights in all EU member states. Counterfeiting

and piracy should be punished effectively. The directive

approximates national laws with regard to:

evidence;

provisional measures;

the calculation of damages; and

the reimbursement of legal fees.

The EU Customs Regulation (1383/2003) addresses customs action

against goods suspected of infringing certain IP rights and the

measures to be taken against goods found to have infringed such

rights. This regulation introduced common rules to prohibit the

free circulation, import, export, re-export or entry of counterfeit

and pirated goods in the European Union.

The Customs Regulation is implemented by Regulation 1891/2004,

which provides:

application forms for EU-wide and national customs action;

and

instructions on how to use the forms.

Both the national and EU-wide customs applications and the

procedure for the detention of counterfeit goods by customs have

been harmonized in all the EU member states. There is no unified EU

customs entity, however. Rather, the national customs

administrations of the 27 member states:

work together;

are subject to common regulations; and

exchange information through a centralized information

system.

However, EU customs practices still have certain particularities

in each member state. In addition, even if the means of enforcing

IP rights have been harmonized, civil and criminal procedures are

different in each member state.

EU application for action by Customs

The EU national customs administrations have broad investigative

and policing anti-counterfeiting powers, including the right to

suspend release and to detain goods suspected of infringing IP

rights. They act not only at the EU borders, but also across the

entire territory of each member state. Any person transporting

products into or through the European Union must have documents

evidencing the genuine origin of such products (eg, on agreement or

invoice).

Before Customs can take any...

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