Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine

Activity 2.1.3October 2014

Strengthening the Protection and Enforcement of Intellectual Property Rights in Ukraine

Activity 2.1.3 October 2014

Communication from the Commission COM(2014) 392 final. 1.7.2014

"Towards a renewed consensus on the enforcement of IPR: An EU Action Plan"

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Quoting Forrest Gump:

“Life is like a box of chocolates, you never know what you will get…”

Unveiling a counterfeit case could compare to a huge box of chocolates. You never know what you

will find beyond…

What can Hide behind a Breach of Intellectual Property Rights?

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What Street Counterfeit could Finance – Terrorist Attack in Madrid 11 M 2004

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What Street Counterfeit could Lead (with the courtesy of LA Sheriff Department - Sergeant Janice Munson and Detective Kevin Olive)

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Counterfeit and Substandard Products are Not a New Phenomenon

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Counterfeit is Just at the Corner Shop Nearby

For men…

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Counterfeit is Just at the Corner Shop Nearby

For women…

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Counterfeit is Just at the Corner Shop Nearby

And for chocolate eaters

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Counterfeit or Not? Not Always so Easy to Say…

Can they Beats it?

Original Beats headphone sold over 250 euro

Superskunk lookalike

headphones are for less than 20

euro

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Financial Benefits from Crime*For each 1000 $ invested (Source EUROPOL 2014)

Crime Return on investment

Forged money *(Foreign LEA - U.S. Secret Service)

$3,300

Credit card fraud*(MC, Visa, Discover)

$6,700

Heroin*(DEA) $19,860

Tobacco smuggling*(2 Major Tobacco Companies)

$43,000

Software piracy*(Microsoft)

$40,000 - $100,000

Fake pharmaceuticals*(Manufacturing Prices of obtaining bulk)

$300,000

The Example of Counterfeit Cigarettes

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According to the tobacco industry, a 40 ft. container can contain half a million packs of 20 cigarettes each. A full container load of counterfeit cigarettes in Asia costs around 150.000 USD. Shipping costs shall amount to around 5.000 USD.

The resale price on the black market is estimated at 2-3.000.000 USD depending of the country.

In the event of an alert or suspicion on the container, re-shipping costs around the world, i.e. 10.000 USD, is nothing compared to the profit expected on the resale of such fake cigarettes to customers.

Is There Any Limit to the Business of Fakes?

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Fake chicken eggs

True story or invented statement?

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TRADE SECRETS, KNOW-HOW, DESIGNS 2000 Purificación García

INDUSTRIAL ESPIONAGE

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Go for the easiest identifiable infringed IPR.

The easiest IPRs to go after are the rights that can prima facie and objectively be evidenced as

having been infringed.

If technical expertise is required to confirm that the IPR has been infringed, the case may result to

be a difficult one.

If the ownership or the content of the IPRs is difficult to determine, the case may also result to

be a difficult one.Trade mark cases are normally the easiest ones to

tackle.

Practical Tips: Summary

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Make sure that the IP right holder is backing you up.

Keep in mind that there could be more

behind your case

Go for the easiest identifiable infringed

IPRTo sell your case - see whether other “more

attractive” legislations are also breached

Gather as much evidence as possible. Seek intelligence

Go criminal only if the IPR violation is clearly established

What Fake to Go after?

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CTM & DesignInfringement

Unfair competition

Customs

Labour

Consumer

Other IP law

Tax fraud

Fraud on the qualityor origin of the product

Safety

Labelling

StandardSocial security fraud

Health and drugAdvertising

Possible Complementary Actions in Case of CTM & Design Infringement (extract from Seminar for Judges)

Money Laundering

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DangerousProduct

Directive 1999/45on packaging

Regulation 608/2013 on customs actions

Regulation 726/2004 on medicinal products

Regulation 1907/2006 on chemical products

Directive 2004/48 on IP enforcement

Directive 2011/62 on falsified medecines

Directive 2001/95 on products safety

Directive 2000/31 on e.commerce

Dec. 768/2008 & Reg. 765/2008 on EC marking

Regulation 1107/2009 on pesticides

Directive 2001/83 on medicinal products

Directive 2006/114 on misleading advertising Directive 85/374

on defective products

Possible EU Legislations Applying to Fake Dangerous Products

(extract from Seminar for Judges)

Directive 2005/60 on money laundering

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Search a trade mark with TMviewhttp://tmview.europa.eu/tmview/welcome.html Search a design with Designviewhttps://www.tmdn.org/tmdsview-web/welcome

Search on classification of products and services with TMclasshttp://oami.europa.eu/ec2

To learn more about IPR on linehttp://

oami.europa.eu/knowledge/course/view.php?id=1507&lngcdd=true&la=en

The Enforcement Databasehttps://www.tmdn.org/enforcementdb-ui-webapp/

Available Search Tools

Search patents with Espacenethttp://www.epo.org/searching/free/espacenet.html Search plant varieties with CPVO Variety Finderhttp://www.cpvo.europa.eu/main/en/home/databases/cpvo-variety-finder

Thank you!

Activity 2.1.3

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