Special issue on Anti-Counterfeiting

The May 2010 issue of the Journal of Intellectual Property Law and Practice is now available online to subscribers. The contents of this issue can be viewed here. This issue has a special theme -- the fight against counterfeits -- and it is guest-edited by Marius Schneider. Marius, partner and attorney at law, Eeman & Partners, is also co-editor with Olivier Vrins of Enforcement of Intellectual Property Rights through Border Measures (Oxford University Press, 2006, here). This is Marius's guest editorial:

Counterfeiting counter-fight

Counterfeiting has grown up: from a cottage industry practised in backroom workshops, it has evolved into a worldwide plague, professionally perpetrated on an industrial scale. The peccadillo has become a global felony, prevalently executed through the involvement of organized crime syndicates attracted by high profits at low risk. Product piracy effectively threatens innovation and creativity—the pillars of our developed economy—and poses a threat to the health and safety of consumers. The FBI has called counterfeiting ‘the crime of the 21st century’.
Counterfeiters are always one step ahead because they continuously adapt to technological and legislative change. To make up the leeway, there is an ever-increasing number of ongoing policy and legislative initiatives.

At the global level, the Anti-Counterfeiting Trade Agreement (ACTA), a proposed multilateral treaty for establishing stringent international standards on IPR enforcement is shortly to be completed, yet the detailed content of ACTA has not reliably been revealed: and we are told that this is usual practice in the negotiation of trade agreements. It is therefore difficult to judge whether, despite the high expectations placed on ACTA, the text will bring major changes in the most developed countries, as their standards are already high. International cooperation and the sharing of best legal practices with less developed and emerging economies will certainly benefit all parties. However, the secrecy around the negotiations and the draft text has nourished the partially unjustified fears not only of Pirate Party partisans and anti-ACTA-activists, but also from MEPs and policy makers across all parties, and the EU data protection supervisor. Those who need to decide on and live with ACTA want to have their say and this must be respected. If not, the future of the agreement is at risk.

At the EU level, novel legislation is in the making. First, the Border Measures Regulation 1383/2003 is under revision. The commendable aims of the review are the simplification and modernization of the procedures to reduce costs for right-holders, and a maximum harmonization of national customs administrations practices. No draft is yet available, but the Commission, under the threat of a WTO panel following a brawl over seizures of medicine in transit, has announced that it will delete every hint to what could be interpreted as a ‘manufacturing fiction’. Furthermore, the ‘simplified procedure’ will be mandatory and the de minimis exception for infringing goods in personal baggage will be repealed. Secondly, the draft Directive on Criminal Sanctions for IPR Infringements is to be revived further to the entry into force of the Lisbon Treaty. Given the increasing involvement of criminals in counterfeiting and piracy, there is a need for harmonized penal measures and cross-frontier investigation procedures. Again, the European Parliament must endorse the text and is likely to have its say. Thirdly, the stakeholder dialogue and the discussions in the EU Observatory on counterfeiting and piracy are ongoing and the results are eagerly awaited. Finally, the Court of Justice of the European Union (CJEU) will have to decide on the two questions for preliminary ruling submitted in Nokia and Philips where the ‘manufacturing fiction’ is at stake. The CJEU must clarify the conditions under which right-holders can take action against fake goods in transit under the Border Measures Regulation (a crucial question, since 40 per cent of the articles seized at EU borders are declared as being in transit). It is not certain that the outcome of the case will allow right-holders to come out victoriously. If the Border Measures Regulation is revised and every reference to the ‘manufacturing fiction’ deleted, the reference to the CJEU is a dead end. Whatever the outcome may be, a review of the substantive IP legislation is necessary to allow right-holders to take effective action against fakes in transit.

There are thus many legislative changes ahead. It should, however, not be forgotten that counterfeiters cannot be fought with words alone. Concrete action and efficient cooperation between all parties involved—right-holders and authorities—is the key to success: this has been so in the past and will not change in the future. The men and women engaged in the daily fight against counterfeiting and piracy make the difference: with goodwill and combined forces, many achievements lie ahead of us in the battle against the pirates".