INTA
Anticounterfeiting
Committee Newsletter
INTA Anticounterfeiting Committee
Dear Anticounterfeiting
Committee Members,
We are honored to be leading such a wonderful team of anticounterfeiting experts during
the 2014–2015 term of the Anticounterfeiting
Committee (ACC). Judging from our ambitious
objectives, this term will be quite productive.
For the new members of the ACC who may not
have read this newsletter in the past, you’ll
see that these pages will provide updates
on relevant anticounterfeiting developments
worldwide as well as information about the
projects of the various ACC subcommittees.
The newsletter will also be available to all INTA
members, government officials and other interested parties.
Although this edition of the newsletter highlights some successful events from last term,
it also shows that this term’s ACC has really
hit the ground running with fruitful events and
submissions in the first two months. We are
very pleased to report that our eight regional
subcommittees are currently working at full
speed to achieve their goals. In addition, two
Cross-Subcommittee Task Forces (Anticounterfeiting Policy & Online Counterfeiting) are being
developed to better coordinate our anticounterfeiting policies and online counterfeiting efforts
on a cross-regional basis. Continuing our work
together at this pace, we expect to make substantive progress in the next two years in the
fight against counterfeiters.
We look forward to seeing you all at our ACC
committee meeting and your respective subcommittee meetings at INTA’s Annual Meeting
in Hong Kong in May. We are anticipating more
great efforts to come.
Sincerely,
ACC Chair
Bartosz Krakowiak, Polservice
ACC Vice Chair
Ayala Deutsch, NBA Properties, Inc.
March 2014
Anticounterfeiting Committee Policy Roundtables
The ACC conducts policy roundtables to communicate INTA positions on anticounterfeiting to
relevant governmental agencies or relevant public policy authorities. These roundtables foster
dialogue with governments on policy issues and have become an efficient way to influence policy
makers and voice INTA’s concerns and interests.
Working Together in the Fight
against Online Counterfeiting
Superior Counsel, the Section President of
Bucharest Court of Appeals, and the Head of
the IP Department at the Bucharest Municipal
Police. The day’s discussions covered issues
such as goods in transit, seizure practices and
methods of identifying counterfeit goods.
The Problem of the Online Sale of
Counterfeit Goods in the Republic
of Serbia
On November 20, 2013, in Hong Kong, SAR,
China, the East Asia & Pacific Subcommittee
hosted a roundtable called “Working Together
in the Fight against Online Counterfeiting” to
start a dialogue among Internet service providers (ISPs), government officials, and INTA
members about online counterfeiting in Hong
Kong. ACC Members Vivien Chan (Vivien Chan
& Co., Hong Kong), Twiggy Liu (Twiggy MH Liu
& Co., Hong Kong) and Deanna Wong (Hogan
Lovells, Hong Kong) planned the event at
the office of Vivien Chan & Co. in Hong Kong.
Also attending were members of Hong Kong
Customs, the Hong Kong Police Force and the
online marketplaces Alibaba and eBay. The
roundtable was a success, as brand owners,
ISPs, in-house counsel and individuals from all
the varied groups in attendance shared with
each other how they can cooperate to combat
counterfeiting activities.
Turning the IP Pages—Past and
Future. Legislative Issues in
Romania and the European Union
On November 22, 2013, the European
Union Subcommittee held a roundtable in
Bucharest, Romania, entitled “Turning the IP
Pages—Past and Future. Legislative issues
in Romania and the European Union.” The
event was hosted by Michael-Andrew Enache
(Ratza & ratza, Romania), and presenters
included the Head of the Legal Department of
the Patent and Trademark Office, the Patent
Chamber President, the General Customs
On December 12, 2013, the Eastern European & Central Asia (EE & CA) Subcommittee
held its fifth and largest event in a series of
roundtables in Belgrade entitled “The Problem
of the Online Sale of Counterfeit Goods in the
Republic of Serbia” organized by EE & CA Subcommittee member Mara Janković (Mikijelj
Janković & Bogdanović, Serbia) and cohosted
by the Serbian Chamber of Commerce. EE
& CA Subcommittee Chair Milan Milojević
(Milojević, Sekulić & Associates, Serbia) participated in the event along with government officials from the Public Prosecutor’s Office, the
Republic Agency for Postal Services, the Ministry of Internal Affairs, the Customs Office and
the Intellectual Property Office. The discussion
focused on ways in which the different bodies
can cooperate to combat online counterfeiting
in Serbia.
Combating Counterfeits at the
Mexican Border
On January 23, 2014, the ACC Latin America
Subcommittee held a roundtable at the offices
“Policy Roundtables” continues on page 2
Anticounterfeiting
Policy RoundtablesPolicy News and Developments
Policy Roundtables Continued from page 1
of the Mexican Institute of Industrial Property
(IMPI) in Mexico City, Mexico. Subcommittee
Chair Gerardo Muñoz de Cote Amescua (Televisa, S.A. de C.V, Mexico) and member Miguel
Angel Carpio (Partner, Langlet, Carpio y Asociados, Mexico) coordinated the event to discuss
the customs practices and seizure practices in
Mexico. IMPI’s Director General Miguel Ángel
Margáin gave opening remarks.
S.C.) and Saul Santoyo (Partner, Uhthoff, Gomez Vega & Uhthoff, S.C.) as panelists at the
event. The roundtable was so successful that
Director General Margáin urged other private
associations to engage in similar events at an
association breakfast meeting that was to be
hosted the following week by IMPI, on January
29 in Mexico City. INTA has been invited to participate in the working groups of these private
associations to help IMPI improve trademark
and enforcement practices in Mexico.
Working Together in Building an
Effective Policy and Framework in
the Fight against Counterfeiting
The Customs Office General Administrator, the
First Secretary for Intellectual Property at the
U.S. Embassy, members of the Attorney General’s Office and the Divisional Director of the Intellectual Property Protection Area at IMPI were
joined by ACC Members Bernardo Herrerias
(Partner, Barrera, Siqueiros y Torres Landa,
Hong
Kong
On February 13, 2014, ACC Middle East,
Africa, & South Asia Subcommittee Chair
Vanessa Ferguson (Trade Mark Director, DM
Kisch Inc., South Africa) organized a roundtable held in partnership with the South
African Institute of Intellectual Property Law
and hosted by the City of Cape Town, South
Africa. Government officials from the City of
Cape Town, South African Customs & Excise,
the National Prosecuting Authority, the Cape
Town Metropolitan Police and the Office of
Consumer Protection met with INTA members
to discuss private and public cooperation to
improve counterfeiting enforcement in Cape
Town. This roundtable is the first in a planned
series of three, which, it is hoped, will result
in closer cooperation between the public
and private sector developing best practices
and measures in anticounterfeiting in South
Africa and some proposed amendments to the
Counterfeit Goods Act for the consideration of
the Department of Trade and Industry for the
Republic of South Africa.
■
136th Annual Meeting
May 10–14
2014
Register for INTA’s 136th Annual Meeting
May 10–14, 2014 | Hong Kong
Expand your professional knowledge and grow your portfolio of international clients at the world’s
largest and most widely attended trademark conference. Whether you are a newcomer or a seasoned IP professional
in Asian markets, the International Trademark Association’s Annual Meeting in Hong Kong presents the perfect
opportunity to explore new opportunities in this dynamic and fast-growing region.
Register now!
Visit www.inta.org/2014INTAAM
2 March 2014
ACC
Anticounterfeiting
Letters and Submissions
Policy News and Developments
Testimony Before Canadian Parliament
In a historic first for the Association, on
Monday, November 18, 2013, INTA appeared
before the Standing Committee on Industry,
Science and Technology (INDU) in Canada’s
House of Commons to testify on Bill C-8—the
“Combatting Counterfeit Products Act.” Representing INTA were ACC Canada Subcommittee
Chair, David Lipkus (Kestenberg Siegal Lipkus
LLP, Toronto), and Trademark Office Practices
Committee—Canadian Intellectual Property
Office Subcommittee Chair, Peter Giddens
(McMillan LLP, Toronto).
Bill C-8, which was originally introduced by
Industry Canada on March 1, 2013, as Bill
C-56, significantly improves anticounterfeiting
measures by amending the Trade-marks Act in
Canada. It also makes numerous changes to
Canadian law and practice. INTA immediately
engaged with Industry Canada, Public Safety
Canada, Canada Border Services Agency
(CBSA) and the Canadian Intellectual Property
Office (CIPO), starting with a delegation led by
President Toe Su Aung on March 8. After the
Parliament officially prorogued on September
13, the Bill was reinstated on October 28 without amendments under the new number C-8
and was referred to the INDU.
knowledge of criminal conduct) requirements
to make the new provision enforceable in practice. The Association also recommended the
removal of a provision in the bill that prohibits
border officials from intercepting counterfeit goods “in transit” (destined for another
country), as well as the establishment of an
administrative regime to efficiently and costeffectively destroy counterfeits that are seized
at Canada’s border.
In its testimony, INTA expressed its support
for Bill C-8 and also suggested a number of
amendments to make the legislation more
effective. These recommendations include
additional provisions to the Trade-marks Act
that give courts the power to award significant
statutory or pre-established damages against
counterfeiters. This is in recognition of situations in which it is difficult or even impossible
for trademark owners to prove measurable
monetary loss or damage. While INTA praised
the bill’s criminalization of the sale and
distribution of counterfeits in Canada, it urged
the inclusion of mens rea (criminal intent or
INTA further recommended that Bill C-8 provide for a cause of action against goods that
are not only identical to those appearing in the
trademark owner’s registration, but also those
goods that are reasonably ancillary, incidental
or connected to the goods that appear in the
trademark owner’s registration or a displayed
trade name that is identical to or can be
confused with a registered trademark. Finally,
INTA strongly recommended that, rather than
allowing CIPO to destroy certain trademark
records after six years, as proposed by the bill,
electronic versions of file histories should first
be created and perpetually maintained.
Members of the INDU Committee were
receptive to certain of INTA’s recommendations— in particular, prohibiting the transit of
counterfeit goods through Canada, strengthening sanctions against counterfeiters and the
need for an efficient administrative regime to
mitigate the concern that the CBSA has limited
resources to stop counterfeits at the Canadian
border. Although Bill C-8 was only moderately
amended by INDU, the Committee did make
some of the recommended changes to the
mens rea requirements of the bill’s criminal
provisions.
Bill C-8 will proceed to the third reading debate
and vote in the House of Commons and will
then be taken up by the Senate. No changes
are expected to be made by the Senate, but
the ACC Canada Subcommittee will work with
agencies such as the CBSA to advocate for
the best way to implement the bill once it is
granted royal assent and becomes law.
To read a transcript of INTA’s testimony to
INDU, please click here.
INTA Comments on the Implementing Regulations on the
Amended Chinese Trademark Law
On February 7, 2014, INTA submitted comments to China’s State Council Legislative
Affairs Office (SCLAO) congratulating the government on its third Trademark Law Revision,
which will take effect on May 1, 2014, and
offering recommendations to further clarify
its draft of the Trademark Law Implementing
Regulations. The ACC China Subcommittee
and China Trademark Office Subcommittee
were the main contributors to the comments.
Anticounterfeiting recommendations include
clear guidelines on determining “heavier fines”
for large-scale or sustained infringements.
To read the full submissions highlighted here, please
go to www.inta.org/anticounterfeiting and click on the
dropdown arrow next to “Testimony and Submissions”
under “INTA resources” near the bottom of the page.
3
Anticounterfeiting Policy News and Developments
Court of Justice of the European Union (CJEU) Ruling in
Martin Blomqvist v. Rolex SA
On February 6, 2014, the Court of Justice of
the European Union (CJEU) clarified Customs
Regulation (EC) No. 1383/2003 in the case of
Martin Blomqvist v. Rolex SA. The case involves
a counterfeit Rolex watch that the plaintiff, a
resident of Denmark, had purchased from a
Chinese website. When Denmark Customs
seized the fake watch that was sent from Hong
Kong and informed Rolex of the seizure, Rolex
requested the counterfeit to be destroyed under
the Regulation. Blomqvist refused, and matters
went to court and up to the CJEU. The Court
ruled that the holder of an intellectual property
right over goods sold to a person residing in the
territory of a Member State through an online
sales website in a non-member country enjoys
the protection afforded to that holder by that
regulation at the time when those goods enter
the territory of that Member State merely by
virtue of the acquisition of those goods. It is not
necessary, in addition, for the goods at issue to
have been the subject, prior to the sale, of an
offer for sale or advertising targeting consumers
of that State.
To read the full decision, please click here.
Helpful Reports on Trademarks and Brands
As 2013 came to an end, there were many new
studies on intellectual property published that
should be helpful to our members.
In November 2013, the World Intellectual
Property Organization (WIPO) released a report
entitled “Brands—Reputation and Image in the
Global Marketplace.” The WIPO report focuses
on the role brands play within the global economy, including the recent evolution of brands,
how they differ in varying jurisdictions, and how
branding strategies influence corporate innovation. To read the full report, please click here.
Also in November, the European Patent Office and the Office for Harmonization in the
Internal Market developed and released a study
titled “The European citizens and intellectual
property: perception, awareness and behavior.”
The study found that EU citizens find value in
intellectual property and generally favor its
protection. Eighty-six percent of those questioned agree that protecting IP contributes to
improving the quality of products and services.
Furthermore, 69 percent value IP because they
believe it contributes to the creation of jobs and
economic well-being. To read the full report,
please click here.
On January 29, 2014, the U.S. Chamber of
Commerce’s Global Intellectual Property Center released the second edition of its International Intellectual Property (IP) Index. The IP
Index highlights issues in 25 different coun-
tries and is meant to be a tool for policymakers
to improve IP protection and the private sector
to assess the risks in these jurisdictions. For
the full report, please click here or see the
interactive companion map.
On February 12, 2014, the Office of the
United States Trade Representative released
the 2013 Out-of-Cycle Review of Notorious
Markets, which identifies select online and
physical marketplaces that reportedly engage
in and facilitate substantial piracy and counterfeiting. Twenty-three online sites and physical
marketplaces in 11 countries have been highlighted in the list. To find out which markets
made the report, please click here.
Border Measures in Latin America
Last term, the ACC’s Latin America Subcommittee conducted a survey of the countries in
its region on possible measures or actions that
may be taken against counterfeiting at borders.
Past ACC Members Agustina Fernández Giam-
bruno (Fernández, Secco & Asociados, Montevideo, Uruguay) and Claudia Serritelli (Estudio
Chaloupka, Buenos Aires, Argentina) wrote an
article highlighting their findings.
For the full report on border measures in Latin
America, please see the INTA Bulletin article.
One of the ten best online trademark tools
just got better!*
Newly updated, the Practitioner’s Guide to the Madrid Agreement and Madrid Protocol is a searchable
database of practical information on the local application of both treaties in the member countries!
* Named one of the Top Ten Online Trademark Tools (World Trademark Review, 2011).
Visit www.inta.org /madridprotocol
4 March 2014
Anticounterfeiting Policy News and Developments
Unreal Update
The Unreal Campaign is INTA’s consumer
awareness program that aims to educate high
school students about the dangers of counterfeit goods and the importance of trademarks.
In partnership with Street Law, Inc. and the
Constitutional Rights Foundation, INTA held a
student engagement session at the Association’s Leadership Meeting at Loews Miami
Beach Hotel on Friday, November 15, 2013.
Unreal Student Engagement Event in Miami
ACC Mission Statement
The ACC evaluates treaties, laws, regulations,
procedures and other enforcement mechanisms
with respect to anticounterfeiting and enforcement.
In addition, the Committee advocates policies to
advance protection against counterfeiting and
infringement and provides anticounterfeiting and
enforcement education.
ACC U.S. Subcommittee Chair Heather McDonald (BakerHostetler LLP, New York) and ACC
Member Eric Berger (A Action Investigations and
Security Inc., Miami) gave presentations to 40
students from Felix Varela Senior High School.
Similar student engagement sessions are
planned for New York and Atlanta in Spring
2014 and for Hong Kong in May at INTA’s
Annual Meeting.
Connect with the Unreal Campaign on
social media:
Eric Berger (A Action Investigations and Security Inc., Miami)
speaks to students in Miami
East Asia and Pacific Subcommittee Chair
Kowit Somwaiya
LawPlus Ltd.
Eastern Europe and Central Asia
Subcommittee Chair
Milan Milojević
MSA IP
Chair
Bartosz Krakowiak
Polservice Patent and Trademark Attorneys Office
European Union Subcommittee Chair
Wiebke Gorny
Anwaltsbuero GORNY
Vice Chair
Ayala Deutsch
NBA Properties, Inc.
Latin America & Caribbean Subcommittee Chair
Gerardo Muñoz de Cote Amescua
Televisa, S.A. de C.V.
Canada Subcommittee Chair
David Lipkus
Kestenberg Siegal Lipkus LLP
Middle East, Africa and South Asia
Subcommittee Chair
Vanessa Ferguson
DM Kisch Inc.
China Subcommittee Chair
George Chan
Rouse & Co. International LLP
Learn more about the Unreal Campaign:
www.inta.org/unrealcampaign
Visit the Campaign’s teen website:
www.unrealcampaign.com
North America Subcommittee Chair
Heather McDonald
BakerHostetler LLP
INTA Contacts:
External Relations Manager, Anticounterfeiting
Candice Li
[email protected]
+1-312-315-4142
External Relations Coordinator, Anticounterfeiting
Maysa Razavi
[email protected]
+1-212-642-1779
Designer
Eric Mehlenbeck
Website: www.inta.org /anticounterfeiting
Although every effort has been made to verify
the accuracy of items in this newsletter, readers are urged to check independently on matters of specific interest.
©2014 International Trademark Association
5