In earlier times, pirates raided ships or attacked seaside villages from the sea. Today, pirates are reaching for their products and brands – not to own them, but to copy them. Product piracy is the keyword. Product piracy, counterfeiting or piracy is the business of so-called counterfeit goods and the reputation exploitation of brands. In doing so, trademark rights or competition regulations are violated; often also copyrights, designs and patents. The copied goods are produced with the aim of being similar to an original product. Or, well-known brands are used for any commodity quasi ale “eye-catcher”, just to give the offers a greater reputation; This is associated with a huge loss of reputation for the owner.
Fake is in almost all areas: software, watches, clothing, medicines, car parts to complete vehicles. Basically, we distinguish four types of copies:
- Product plagiarism has a slightly different brand name. Often behind them are products that are not produced by the original manufacturer.
- Slavish forgeries try to copy the original exactly. Packaging and brand name are often identical to the original.
- Classic counterfeits use identical packaging and the name of the original producer. The contents often give way and are inferior.
- Pirated copy is the common name for illegally produced and / or distributed copies of copyrighted material. As a rule, products of the media industry are affected.
Anti-Counterfiting – Complex measures against counterfeiters
In the fight against product and brand pirates, the complexity of the measures is of great importance. Highly complex actions, as we offer them to our customers, are still rare. Currently outweighing routine actions; about seizures. But counterfeiters can react quickly and routinely to these measures – simply by moving to a new hiding place. And whoever believes the root cause of the problem can only be found in the countries of origin of the counterfeit products – and the problem can be solved by closing the manufacturing factory in China – is unfortunately wrong.
The source of the problem is much more to be found where the clients sit – often in Western Europe. These clients have their goods manufactured in China and then sell the goods in Eastern Europe or elsewhere. In some cases, in our experience, it can be very effective against sales. For example, if the identity of the client is still unknown or if not all information required for an effective procedure is available. Through concerted actions (seizures, customs investigations) in the distribution structure and subsequent civil and criminal proceedings, sales can become economically so unattractive that the clients are ideally forced to surrender.
However, the full clout of anti-counterfiting only arises when the following 5 areas of action are combined: protective rights, monitoring, civil law measures, criminal law measures, customs seizure
The early filing of national and international intellectual property rights is, in addition to copyright and competition law, almost the only way to acquire a legal right to intellectual property. Exception: If, for example, there is a “slavish imitation”, companies can win processes without a previous patent application; only with the help of competition law.
The relevant industrial property rights are trademarks (… used to identify goods or services), patents (… protect the technical properties of a product or process), utility models (… the utility model often referred to as a “small patent” is also a genuine invention protection right), Design (protection of design / appearance of a product) and the semiconductor and plant variety protection
Effective anti-piracy requires a comprehensive tracking and market observation system. We have a specially developed and unique system for operational investigation and analysis; with its own undercover investigators, specialized staff, and test buyers focused on tracking down people and pirated goods.
In addition, we comb through all areas of the Internet with specially developed search algorithms and screening procedures. The results are prepared by our employees and made available to our customers for further use. This enables us to identify and track piracy goods, locate counterfeiting sources and track distribution channels.
3. Civil actions
Out-of-court and judicial measures can take effect: A warning is sent to the infringer out of court to submit a cease and desist letter. In addition, he is obliged to provide information about the sales and profits achieved as well as the acknowledgment of liability for damages.
With a court injunction these claims can be enforced provisionally, with a court action – or submission of a final declaration on the injunction – finally enforced. In addition, there is the possibility of provisional protection of property and property of the infringer by way of a real arrest. In addition, pirate goods may be taken into custody by the bailiff as part of the enforcement of the injunction.Or an attempt is made to obtain seizure by the law enforcement authorities.
The enforcement of judicial decisions can be enforced by means of order and coercion: It can imposed a fine and order in the event that this can not be recovered, substitute custody or even direct custody order. The maximum amount is 250,000.00 Euro, in practice, sums of 10,000.00 Euro are common, which increase drastically with continued non-compliance. The maximum of orderly detention is 6 months. Likewise, the title may also be enforced for information by imposing coercive means
4. Penal measures
Above all, penal measures have a deterrent effect. Piracy affects a variety of offenses. While some criminal offenses, such as §§ 196 UrhG, 51 GeschmMG, 142 PatG, 25 GebrMG, 143-144 MarkenG cover both production and distribution, other criminal provisions sanction acts that already arise in the run-up to the imitation. This concerns the spying on business and trade secrets, the secret betrayal or the original free-thinking. Product pirates usually seek to destroy any evidence in order to avoid criminal prosecution. Pirate goods are generally important for the criminal investigation, as their inspection in principle, the proof of license violation can be performed.
5. Customs seizure
A particularly effective instrument is the confiscation of pirate goods at the border or by mobile customs control groups within the EU. The border approval procedure is initiated by us as a representative under Art. 5 Piracy Regulation. Under Article 9 (1) of the Piracy Regulation, the customs office suspends or holds back goods and informs us. Afterwards it is possible to examine the goods. This is followed by the legal proceedings or a simplified extermination procedure according to Art. 11 Piracy Regulation. If a company discovers imitations of its products at a trade fair or event, it is also possible to have the goods removed from the fair or sales booth by the customs authorities. We do so with the customs authorities trade fair and event tours and remove the counterfeits from the stands by the mobile control groups; these are uniformed and armed customs officers who have extensive powers as investigators of the Public Prosecutor’s Office.
Effective and efficient: the summary works best
Civil, criminal and customs measures can be applied. These interlock and should be used in combination. Thus, both the strong deterrent effect and the police investigation possibilities in the criminal proceedings, as well as the benefits of a quick termination of piracy and claims for damages in civil proceedings come to fruition. We make sure that the measures are timed to each other.Thus, the delivery of an injunction can be coordinated with a police search and the seizure can be used to secure profits from the product piracy to the satisfaction of claims for damages. The cornerstone of a successful anti-counterfiting strategy is, besides the right timing, the coordinated cooperation with the customs authorities and the continuous monitoring of the market.
With effect and efficiency to success
For all measures, the impact and cost-benefit calculation must be right: costs can already be reduced when applying for protection rights. For example, we recommend that you use the low-cost option of the EU Community trademark / design. The submission of a request for border demarches to the customs authorities and the filing of a complaint are initially free of charge to the investigating authorities. In the case of civil law measures, reimbursement for the costs incurred in pursuing a legal action can generally be demanded from the other side; the unsuccessful party must reimburse the attorney’s fees to the amount stipulated by law. Ideally, an effective and efficient anti-counter-fiting model can not only avoid costs, but generate additional revenue through compensation processes.
Your Christian Zierhut
About Z I E R H U T * I P * Attorneys for Brand Protection in the global market
At Z I E R H U T * I P we specialize in intellectual property protection and defend brands on the global market, using a combination of our experienced IP attorneys and proprietary technology. Technology is an important factor of our protection solution, it employs high efficient algorithms that scan the internet and identify IP infringements. We then validate and remove the infringements and ask the infringers for information about trade channels, sales and profit and we seize and destroy the counterfeits and claim damages, all while reporting the infringements in real time to our clients.