Written by Elisabeth Guissart and Claire Leonelli - Avocats à la Cour
Published on 06.11.2018 - Paperjam
The EU Council recently published a new version of its draft Customs Action Plan to fight against counterfeiting[1]. This is an opportunity to take stock of the tools available to brands in Luxembourg to protect themselves against this scourge.
IP infringement? All types of sectors and products are affected, including beyond the luxury industry: pharmaceuticals, cosmetics, jewelry, leather goods, ready-to-wear, shoes, food, industry, IT, etc.
According to the latest official European figures (2013), up to 5% of the products imported into the European territory were pirated products (i.e. 85 billion euros). In Luxembourg, among the infringed products imported from countries outside the EU and seized by customs, we find mainly medicines (prescription and non-prescription, aphrodisiacs, tranquilizers), nutritional supplements, luxury goods (watches and leather goods) or cell phones or their accessories.
The vast majority of goods seized by customs are destined for individuals who have purchased them via the internet. Small consignments are now the most important mode of import of counterfeit goods (more than 50% in 2013). This phenomenon can be explained by the rise of e-commerce, the relatively low transport costs and the reduced risks for traffickers, as small shipments are also a way for them to be more discrete.
While IP infringement has a significant economic impact, it also represents a danger for the safety and health of consumers. Many everyday consumer products are counterfeited in defiance of European standards: medicines, cosmetics, toys, spare parts, food, cleaning products or pesticides.
For many years, the EU has responded by harmonizing and coordinating the action of Member States' customs to prevent infringed products from entering the European market. In 2016, over 41 million items were seized at our borders. The Luxembourg authorities seized from mid-2017 to mid-2018 nearly 196,000 items in 629 interceptions.
The system put in place thus allows a holder of intellectual property rights (trademark, designs, patent, geographical indication...) to request the intervention of the customs authorities (including Luxembourg) (in accordance with EU Regulation No. 608/2013) by providing them with a detailed and accurate description of the authentic goods. In summary, if the request for intervention is accepted, when customs identify potentially infringing products, they block the goods and inform both the owner and the holder of the potentially infringing rights who then have the opportunity to inspect the detained goods. They may also take samples and send them to the right holder for analysis.
On an operational level, a request for customs intervention can be made on the basis of a paper form or via a platform recently set up by the Commission, called "Enforcement Database or EDB" (https://www.tmdn.org/enforcementdb-ui-webapp/).
In addition to the possibility of requesting customs intervention, this platform allows right holders to send alerts to the customs authorities or to quickly provide information in case of suspected counterfeiting.
In addition to requesting customs intervention, it is particularly useful to implement one or more technical solutions to protect against IP infringement.
These protection measures are very varied: protection of the packaging of the products (by means of an anti-counterfeiting label which can itself include authentication elements) or of the products themselves. The controllable elements are varied: holograms, individual numbering, watermarks, variable inks, inks invisible to the naked eye, digital markings, integrated images only visible with filters, etc.
In view of the diversity of these solutions, they must be carefully chosen according to their costs, but also according to the type of products and markets concerned, the marketing channels or the people who will be required to carry out controls.
Note that in order to make it easier for customs officers to distinguish between copies and originals, it is useful to communicate to them the measures put in place (or some of them). This can easily be done via the EDB platform.
The fight against counterfeiting IP infringement requires constant vigilance and a capacity for continuous adaptation on the part of the authorities and producers, while traffickers are constantly improving the quality of copies, both of products and of authentication measures. As a manufacturer, it is therefore essential to have a clear strategy to fight against it.
[1]Draft Council conclusions on the EU Customs Action Plan to combat IPR infringements for the period (2018-2022) - Document No. 12002/1/18/REV1.