Posts Tagged: "counterfeiting"

The Office of the United States Trade Representative (USTR) released its annual Special 301 Report today, which identified 27 trading partners of the United States as being either on the “Priority Watch List” or “Watch List.” This means that “particular problems exist in that country with respect to IP protection, enforcement, or market access for U.S. persons relying on IP,” according to the Report. While the Priority Watch List is shorter this year, the USTR continues to highlight concerns about China, particularly with respect to recent statements made by Chinese officials about the role of IP in achieving Chinese market dominance.

Owners of trademarks and copyrights registered in the U.S. have available a potent enforcement tool to stave off entry of increasing volume of infringing and counterfeit goods into the U.S. – recordation of these rights with U.S. Customs and Border Protection. CBP has recently extended recordation eligibility to pending copyright applications on a temporary six-month basis. The investment for recordation is nominal, the process is simple, and the IP rights enforcement services received in return are significant.

To do business in Africa, it is important to understand how African countries conduct trade and commerce among themselves and with the rest of the world. Specifically, IP right holders navigating the continent would be better served by an informed economic roadmap into the continent. A proper understanding of the business terrain and IP regimes becomes important for global brands looking to pitch their tent in Africa. This article focuses on West Africa and will inform international investors and global brands about the market and the interplay between trade, commerce and IP. It also proffers solutions to key concerns that can derail the commercial interest in the region.

On August 17, the United States Court of Appeals for the Second Circuit vacated and remanded a decision of the district court in Tiffany & Co. v. Costco Wholesale Corp. In particular, the Circuit Court held that the district court’s determination that Costco was liable for trademark infringement and counterfeiting was inappropriate at the summary judgment stage. In November 2012, a customer alerted Tiffany that Costco was selling diamond engagement rings that she believed were being advertised as Tiffany & Co. rings. Costco admitted to selling rings with identifying signs using the phrases “Tiffany setting,” “Tiffany set,” or “Tiffany style,” and in some instances using only the word “Tiffany” for identifying the setting style of the ring. The rings identified by the customer were accompanied by signs reading “Platinum Tiffany.”

On April 2, the Court of Justice of the European Union (CJEU) issued a ruling absolving e-commerce giant Amazon.com of trademark infringement allegations brought by a German perfume distributor seeking redress for Amazon’s storage and distribution of brand-infringing perfume products sold by third-party sellers. The decision, issued by the CJEU’s Fifth Chamber, holds that Amazon’s mere storage of infringing goods in the context of its online marketplace does not constitute an infringement of trademark rights by Amazon.

In June 2019, five-years of legal proceedings between Microsoft and Zhytomyrgas PJSC in the Ukrainian courts came to an end. The parties began their battle in the context of criminal proceedings and ended the dispute in the economic court. Microsoft ultimately was successful. Ukraine has been among the countries on the U.S. Special 301 Report, prepared by the Office of the U.S. Trade Representative, for years due to its high rate of copyright violations. Ukrainian citizens, government agencies and enterprises are no exceptions. At the same time, Ukraine ranks second in Eastern Europe in the number of software developers and number one in the world in the number of developers per 1,000 inhabitants.

As online marketplaces have been created and subsequently evolved over time, there always seems to be a point where counterfeits and diverted gray-market goods make their way onto those marketplaces. eBay was one of the first e-commerce sites that gave brand owners and trademark owners the ability to review, monitor and take down infringing goods. This program was called VERO (Verified Rights Owner Program). Alibaba and Amazon are now making their own similar efforts to rid their platforms of counterfeit and infringing goods in an effort to keep the big brands interested in selling on their sites.

Australia’s Tobacco Plain Packaging Act (TPPA) was enacted in 2011 and prohibits all use of trademarks (other than word marks) on tobacco product packaging. The law seemingly created a domino effect around the world, with countries including Hungary, Ireland, New Zealand, Norway, and the UK having enacted similar laws since, and many other countries presently considering various approaches to restricting tobacco and other products, including alcohol, snack foods and soda. Most recently, Canada enacted the Tobacco and Vaping Products Act, which places certain restrictions on tobacco products, and is still considering broader plain packaging regulations. Complaints about the law have been pending with the World Trade Organization (WTO) for some time, and, on January 14, the International Trademark Association (INTA) submitted a brief opining in the latest stage of that case.

International trademarks were once only necessary for large scale businesses and corporations. In today’s global marketplace, however, nearly any business, especially a business with online exposure, should consider filing for an international trademark. With the rise of counterfeiters and cybersquatters in other countries, like China, protecting your brand at home and across the world may be more critical than ever. Having a strategic trademark plan on a global scale will ensure your brand’s value will be managed by you, not an imposter from a country half the world away. Consider the following as you begin the process to register your trademark internationally.

While many holiday shoppers may think that they’re getting a bargain by purchasing goods displaying a particular brand without having to pay brand prices, these shoppers are unwittingly gifting low-quality items or worse, products that pose health hazards, to their friends or loved ones. Thanks in large part to the Internet, counterfeiting operations have reached epidemic levels in recent years. Nearly half of all brand owners are losing revenues because of the sale of counterfeits and, in 2017, U.S. customs agencies seized a total of 34,143 shipments carrying counterfeited goods being imported into the U.S. But counterfeiting is a victimless crime, the common refrain goes. Nothing could be further from the truth. Terrorist organizations and organized crime families are turning to counterfeiting as a meaningful source of income given the exceptionally low penalties even if they are caught and extraordinarily high profit margins — profit margins that are even higher than selling drugs on the street. 

Black Friday is one of the most important retail events of the year for brands and consumers alike. This sales event is particularly tempting for price-centric Millennials whose diverse buying habits put them at increased risk of falling for fakes. Representing one of the biggest Black Friday consumer segments, they are particularly vulnerable to counterfeiters. Last year alone, our data show that an estimated $482 million were lost on Black Friday from Millennials who unwittingly bought fakes online.

The WHOIS database provides technical information about the date of creation and expiration of a domain, as well as contact information for the registrant of a website, including name, physical address, email address, and phone numbers. GoDaddy and WHOIS.com appear to have selectively redacted the information only for registrants providing an EU contact address. However, given the difficultly of determining which domain owners are EU citizens, many registrars, such as Tucows, removed data for all domains regardless of where the registrant is located. In light of this WHOIS blackout, the GDPR has effectively made it easier for counterfeiters and infringers to evade detection.

The rate of digital transformation within the business world is unstoppable. Of course, transformation of this kind can deliver numerous benefits, but it is also leading to an increase in illicit counterfeit activity. Almost half (47%) of all brands are losing revenue due to counterfeiting while four out often organizations have experienced an increase in the occurrence of counterfeiting and brand infringement. This has, more often than not, originated from a variety of components related to digital transformation on a global scale, including but not being limited to: advances in social media (61%); chat/messaging (52%); artificial intelligence (51%); the dark web (48%), and augmented reality (47%).

Counterfeiting can sometimes be seen as a victimless crime where the only ones losing out are the super-rich corporations whose products are being copied. This is simply not true… A big reason for the increase in fake goods is that quite simply, that they are getting harder and harder to spot, both by consumers and also by the authorities.