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"
Strengthening the Protection and Enforcement of Intellectual
Property Rights in Ukraine
Activity 2.1.3
October 2014
What can Hide behind a Breach of Intellectual Property Rights?
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…
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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
eaters
chocolate
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Counterfeit or Not? Not Always so Easy to Say…
Superskunk lookalike
headphones are for
less than 20 euro
Original Beats
headphone sold over
250 euro
Can they Beats it?
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Financial Benefits from Crime
*For each 1000 $ invested (Source EUROPOL 2014)
Crime
Return on investment
Forged money
$3,300
*(Foreign LEA - U.S. Secret Service)
Credit card fraud
$6,700
*(MC, Visa, Discover)
Heroin
$19,860
*(DEA)
Tobacco smuggling
$43,000
*(2 Major Tobacco Companies)
Software piracy
$40,000 - $100,000
*(Microsoft)
Fake pharmaceuticals
*(Manufacturing Prices of obtaining bulk)
$300,000
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The Example of Counterfeit Cigarettes
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 23.000.000 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.
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Is There Any Limit to the Business of Fakes?
Fake chicken eggs
True story or invented
statement?
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INDUSTRIAL ESPIONAGE
 TRADE SECRETS, KNOW-HOW, DESIGNS
 2000 Purificación García
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Practical Tips: Summary
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.
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What Fake to Go after?
Go for the easiest
identifiable infringed IPR
Make sure that the IP
To sell your case - see whether
right holder is backing
other “more attractive”
you up.
legislations are also breached
Keep in mind that there
could be more behind
your case
Gather as much evidence as possible. Seek
intelligence
Go criminal only if the IPR violation is clearly
established
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Possible Complementary Actions in Case of CTM & Design
Infringement (extract from Seminar for Judges)
Unfair competition
Other IP law
Money Laundering
Labour
Standard
Social security fraud
Customs
Labelling
CTM & Design
Infringement
Safety
Consumer
Tax fraud
Health and drug
Advertising
Fraud on the quality
or origin of18 the product
Possible EU Legislations Applying to Fake Dangerous Products
(extract from Seminar for Judges)
Directive 1999/45
on packaging
Directive 2004/48
on IP enforcement
Dec. 768/2008 & Reg. 765/2008
on EC marking
Directive 2001/83
on medicinal products
Directive 2001/95
on products safety
Regulation 608/2013
on customs actions
Dangerous
Product
Directive 2011/62
on falsified medecines
Regulation 1907/2006
on chemical products
Directive 2000/31
on e.commerce
Directive 2006/114
on misleading advertising
Regulation 726/2004
on medicinal products
Regulation 1107/2009
on pesticides
Directive 2005/60
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on money laundering
Directive 85/374
on defective products
Available Search Tools
Search on classification of
products and services with
TMclass
Search patents with Espacenet
http://oami.europa.eu/ec2
Search plant varieties with CPVO Variety
Finder
Search a trade mark with
TMview
http://tmview.europa.eu/tmview/welc
ome.html
Search a design with
Designview
https://www.tmdn.org/tmdsviewweb/welcome
http://www.epo.org/searching/free/espacen
et.html
http://www.cpvo.europa.eu/main/en/home/databases/c
pvo-variety-finder
The Enforcement Database
https://www.tmdn.org/enforcementdb-uiwebapp/
To learn more about IPR on line
http://oami.europa.eu/knowledge/course/view.php?id=1507&lngcdd=true&la=e
n
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Activity 2.1.3
Thank you!
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