1. www.EemanPartners.com EEMAN & PARTNERS Recent developments in the field of anti-counterfeiting Including policy initiatives and recent cases from the EU Courts Marius Schneider Attorney-at-law Eeman & Partners

2. www.EemanPartners.com EEMAN & PARTNERS Outline I.Facts, figures and policy initiatives II.Legislative developments III.Developments in the case-law

3. FACTS, FIGURES AND POLICY INITIATIVES

4. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives a. New OECD figures b. Report on ‘Border Measures’ in the EU and EU Customs Action Plan to combat IPR infringements 2009-2012 c. Increasing involvement of organised crime d. Observatory on counterfeiting and piracy e. Stakeholder dialogue

5. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives a. New OECD figures 2008 OECD study on counterfeiting and piracy international trade in counterfeit and pirated goods could have accounted for up to USD 200 billion in 2005

6. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives a. New OECD figures Updated report November 2009 –counterfeit and pirated goods in international trade grew steadily over the period 2000-2007 and could amount to up to USD 250 billion in 2007 Evolution of trade in counterfeit and pirated products (upper limit)

7. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives a. New OECD figures Updated report November 2009 share of counterfeit and pirated goods in world trade is also estimated to have increased from 1.85% in 2000 to 1.95% in 2007 these figures do not include domestically produced and consumed products, or non-tangible pirated digital products source: http://www.oecd.org/dataoecd/57/27/44088872.pdf

8. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (1) Customs detentions have never been so high, with an increase of almost 13% – over 49 000 cases registered, compared to 43,000 in 2007.

9. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (2) There was a sharp increase in 2008 in the actual number of IPR infringing goods detained by customs – 178 million compared to 79 million in 2007.

10. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (3) In terms of cases, the most significant increases can be seen in the following product categories: –toys: +136% –electrical equipment: +58% –medicines: +57 % –personal care products: +42%;

11. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (4) The number of articles detained increased even more significantly, in particular in the following categories - DVDs: +2600% - medicines: + 118% - cigarettes: + 54% CD/DVD was the top category of articles detained with a total amount of 79 million, which accounted for 44% of the entire amount, followed by cigarettes (23%) and clothing and accessories (10%)

12. www.EemanPartners.com EEMAN & PARTNERS

13. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (5) China was the main source country for IPR infringing articles with 54% of the total amount. However, in certain product categories, other countries were the main source, notably Indonesia for foodstuff and beverages, the United Arab Emirates for cigarettes and India for medicines.

14. www.EemanPartners.com EEMAN & PARTNERS

15. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (6)

16. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (7)

17. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (8)

18. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (9) Cooperation with industry has continued to develop, with nearly 13,000 applications (10,000 in 2007) filled in by the industry to request customs actions in cases where there is a suspicion that products are infringing an IPR. This represents 80% of the customs interventions in 2008.

19. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. 2008 Report on ‘Border Measures’ in the EU (10) source:http://ec.europa.eu/taxation_customs/resources/documents/customs/customs_ controls/counterfeit_piracy/statistics/2009_statistics_for_2008_full_report_en.pdf

20. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives b. EU Customs Action Plan to combat IPR infringements, 2009-2012 –Dangerous counterfeit goods –Organised crime –Globalisation of counterfeiting –Sale of counterfeits over the internet Source: Council Resolution on the EU Action Plan

21. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives c. Increasing involvement of organised crime –high margins and low risk of sanctions –complementary to other criminal activities

22. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives d. Observatory on counterfeiting and piracy based on existing Commission structures members from both the private and public sectors 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

23. www.EemanPartners.com EEMAN & PARTNERS I. Facts, figures and policy initiatives e. Stakeholder dialogue measure aimed at facilitating stakeholder dialogue and voluntary inter-industry agreements

24. LEGISLATIVE DEVELOPMENTS

25. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments a.Status of the ACTA (Anti-Counterfeiting Trade Agreement) negotiations b. Review of the ‘Border Measures’ Regulation 1383/2003 c. Review of the ‘Enforcement Directive’ d. Draft Directive criminal sanctions

26. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments a. Status of the ACTA negotiations –proposed multilateral trade agreement for establishing international standards on intellectual property rights enforcement throughout the participating countries –USA, the European Commission, Switzerland and Japan first announced that they would negotiate ACTA –since then the following countries have joined the negotiations: Australia, Canada, Jordan, Mexico, Morocco, New Zealand, Republic of Korea, Singapore and United Arab Emirates

27. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments a. Status of the ACTA negotiations Goal is pursued through three primary components international cooperation; enforcement practices; and legal framework source: The Anti-Counterfeiting Trade Agreement - Summary of Key Elements Under Discussion http://trade.ec.europa.eu/doclib/docs/2009/november/tradoc_145271.pdf

28. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments a. Status of the ACTA negotiations International Cooperation: sharing of information and cooperation between law enforcement authorities (customs and other relevant agencies). capacity building and technical assistance in improving enforcement international cooperation among enforcement agencies

29. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments a. Status of the ACTA negotiations Enforcement Practices: promote strong intellectual property protection in coordination with right-holders and trading partners ("best practices") formal or informal public/private advisory groups fostering of specialized IP expertise within law enforcement structures raising consumer public awareness about the importance of IPR protection and the detrimental effects of IPR infringements

30. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments a. Status of the ACTA negotiations Legal Framework: strong and modern legal framewor: Border measures Civil enforcement Criminal enforcement Internet distribution and information technology

31. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 General objectives of the review: –simplification and modernisation of the procedures with the aim to reduce costs, and a maximum harmonisation of the procedures applied by the national customs administrations –simplification of the application procedure through standard forms and a central database

32. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review –Transit –Personal allowance –Simplified procedure –Use of information –Destruction –Definitions

33. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review Transit (1) –Commission DG TAXUD ”is not a customs problem” –Border Measures Regulation allows customs to control goods in transit and other suspensive procedures, and that this will not be changed in the future –“manufacturing fiction” (cfr Recital 8 of Regulation 1383/2003) will most probably be “tidied up” –change of the substantive laws is needed

34. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review Transit (2) the detention of pharmaceutical goods in transit from India to Brazil and the threat of a WTO panel source: Joint Statement of DG TAXUD and pharmaceutical industry http://ec.europa.eu/taxation_customs/resources/documents/custom s/customs_controls/counterfeit_piracy/right_holders/jointstatement_ customs_pharma.pdf

35. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review Personal allowance –current text of the Regulation is not satisfactory and that the duty free allowance is not the right criterion

36. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review Simplified procedure –Commission aims to provide for a mandatory simplified procedure –no “implied consent” presumption, which allows right-holders to proceed with the destruction of the goods in the absence of reaction of the traffickers

37. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review Use of information Many requests for clarification on the use that may be made of information gathered through customs seizures as nominal date and data protection is at stake no change of the Regulation should be expected

38. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review Destruction more flexibility regarding destruction procedures and recycling

39. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Issues subject to review Definitions next version of the Regulation will contain a series of definitions eg trade marks it will most likely be possible to take action against infringements of famous trade marks.

40. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments b. Review of the ‘Border Measures’ Regulation 1383/2003 Timing –review process and the technical discussions with the Member States are still ongoing until spring 2010 –comments by stakeholders –Taxud will no longer discuss the transit issue and press the review process forward review process (fear of WTO panel)

41. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments c. Review of the ‘Enforcement Directive’ one of the tasks of the Observatory

42. www.EemanPartners.com EEMAN & PARTNERS II. Legislative developments d. Draft Directive criminal sanctions –with the Lisbon Treaty and the Stockholm Declaration there are new perspectives for this legal instrument –Problem: The Commission proposal refers to all kinds of intellectual property rights infringements. Parliament want to keep patents out of the scope and possibly limit the scope to copyright and trademarks. –The Commission's draft foresees an obligation for member states to impose prison sentences, as well as criminal and non-criminal fees.

43. DEVELOPMENTS IN THE CASE-LAW

44. www.EemanPartners.com EEMAN & PARTNERS Developments in the case-law a.Recent decisions of the CJEU b.Pending questions for preliminary ruling c. Important national decisions

45. www.EemanPartners.com EEMAN & PARTNERS III. Developments in the case-law a. Recent decisions of the CJEU 12 February 2009, Case C-93/08 Schenker SIA –The initiation of the simplified procedure laid down in Article 11 of Regulation 1383/2003 does not deprive the competent national authorities of the power to impose a penalty on the parties responsible for importing those goods into the Community customs territory.

46. www.EemanPartners.com EEMAN & PARTNERS III. Developments in the case-law a. Recent decisions of the CJEU 2 July 2009, Case C-302/08, Zino Davidoff SA v Bundesfinanzdirektion Südost –The holder of an internationally registered trade mark designating the European Community is entitled to file a ‘Community’ application for customs action under Article 5(4) of Regulation (EC) 1383/2003 of 22 July 2003, just like the proprietor of a Community trade mark.

47. www.EemanPartners.com EEMAN & PARTNERS III. Developments in the case-law b. Pending questions for preliminary ruling NOKIA High Court, England and Wales, 27 July 2009, Nokia Corporation v Her Majesty's Commissioners of Revenue & Customs (HMRC) [2009] EWHC 1903 (Ch) : For fake products bearing a trade mark to be classified as ‘counterfeit goods’ within the meaning of Regulation 1383/2003, they must infringe a trade mark in the territory in question. Court of appeal has referred the matter for a preliminary ruling to the ECJ, but appeal Judges, including Lord Justice Jacob, made it clear that they were strongly persuaded by the initial judgment

48. www.EemanPartners.com EEMAN & PARTNERS III. Developments in the case-law Pending questions for preliminary ruling Koninklijke Philips Electronics Antwerp Court of First Instance, 4 November 2009, NV Koninklijke Philips Electronics v Far East Sourcing Limited (AR No 02/7600/A), The case relates to Regulation 3295/94, the predecessor of Regulation 1383/ 2003

49. www.EemanPartners.com EEMAN & PARTNERS III. Developments in the case-law b. Pending questions for preliminary ruling Google French Cour de Cassation (Joined Cases C-236,7,8/08, Google France and ors v Louis Vuitton Malletier and ors) Advocate-General Poiares Maduro - 22 September 2009 Google’s use of its AdWords tool cannot in itself amount to trade mark infringement.

50. www.EemanPartners.com EEMAN & PARTNERS III. Developments in the case-law c. Important national decisions Germany: MP3 Player – transporters Different EU Courts: E-Bay

51. www.EemanPartners.com EEMAN & PARTNERS Marius Schneider attorney-at-law ms@edr.be Bld de la Cambre, 33 bte 8 1000 Bruxelles Tel. : +32 -2-672 58 00 Fax : +32 -2-672 68 31 www.EemanPartners.com Questions ?