head of intelligence and operations
TRANSCRIPT
Helen Saunders Head of Intelligence and Operations
Top tips for anti-counterfeiting strategies
Fully understand the problem
relevant rights in
advance
3D printing, mobile…
Rachel Alexander – Wiggin LLP
Difficulties of enforcing against counterfeiter
Dynamic methods of selling counterfeit goods
Multiple routes of access to consumers
5
What are the routes to market?
What is the level of infringement?
Which intermediaries are being used?
6
Intermediaries
Often “best placed” to take action
Recital 59 Info Soc Directive (2001/29/EC)
Art. 11 Enforcement Directive (2004/48/EC)
“Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries
whose services are used by a third party to infringe an intellectual property right....”
7
Hosting providers
Not liable under EU law provided:
No actual knowledge of illegal activities;
If obtain such knowledge, act expeditiously to disable access to infringing content.
Take down notices – short term solution?
“Bulletproof” hosts
Action can be sought on expedited basis
Extends to sites operated outside the US
8
Over 100 piracy sites now blocked
Use falls by around 77% within 2 months of the implementation
Cartier v Sky – principles applied to online trade mark infringement
Threshold conditions:
Use of the ISPs’ services to infringe
Actual knowledge
Reluctant to offer assistance
Google’s policies apply to copyright but not to trade mark infringement
Legal action taken in other jurisdictions:
Allostreaming
Equustek
Canada – Anti-Fraud Centre
“RogueBlock”
10
To keep up with counterfeiters, enforcement needs to keep up with technology.
Anti Copying in Design
VC of the Alliance for Intellectual Property
23 February 2016
Intellectual capital is a critical asset, the DNA running through most
businesses whether small or large.
Anti Copying in Design
enriching our lives as consumers
UK Design a success story, punching above our weight
34% in 5 years Worth £81.4 billion 350,000 UK designers mainly micro and SME Export increase by 76% since 2009 For every £1 invested in design business return £4 in net operating profit
“imitation isn’t flattery if it
costs
you YOUR business”
…. tackle IP issues from a position of strength with a proactive IP strategy and
SHOUT ABOUT IT!
environment
Industry-led solutions
Anti Copying in Design
1000’s of designers from diverse sectors. ACID is committed to fighting IP theft and safeguarding innovation to ensure that today’s & tomorrow’s growth creators live in a safer trading environment with job certainty
Thousands of settlements, the majority of them on
unregistered design rights
Artists Bridal Ceramics Childrens’ wear Design Agency Education Fabrics & Textiles Fashion Fine Art Fires & Fireplaces Floor Coverings Furniture Garden Products Giftware Graphics Greetings Cards Interior Accessories Interior Design Jewellery Kitchen & Bathroom Lighting Photography Product Design The Arts Toys
Louis Pasteur
strategy will help in handling
copycats, knock offs and cheap
imitations
Registration provides stronger prevention against copying
What is a design? “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ...
DETERRENCE
shape
texture
colour
lines
materials
ornamentation
contours
REGISTRATIONS
National
European
World
CONFUSION!
examination by the Supreme Court.
Clarity is required on what is and what isn’t acceptable to rely on in a registered design
case .
Design – what is and isn’t protected with unregistered and registered design?
Anti Copying in Design
Safer online trading
ACID Marketplace PROMOTES & TRACKS
Anti Copying in Design
evidence and
Seek advice –
Relying on a registered design? you don’t have to prove copying. If unregistered design gather your design audit trail evidence (ACID Design Data Bank). Power of letter before action with supporting evidence often enough to settle a case
If relying on unregistered design do you have an IP audit trail?
Anti Copying in Design
trail:
Signed and dated drawings. Helps if they are held by an independent 3rd
party – ACID? Solicitor, IP AdvisorSigned, dated, drawing
number, any registrations ©
If you don’t want to be copied say so!
And shout
about it!
POSITIVE
COMMUNICATION
POSITIVE
COMMUNICATION
All intellectual property rights (and images, text and design of the website/brochure are and will remain the property of Acnolee Ltd. Any infringements will be taken seriously
www.acnolee.co.uk
Anti Copying in Design
“Naming & Educating!” ACID has had 1000’s of settlements & publicise them all even if there is
a confidentiality agreement – there are
ways around this! Social Media – spot the copy? Original or copy?
/ ( / ) Innermost Ltd / / ( / ) Innermost Ltd /
All intellectual property rights are and will remain the
property of innermost. Any infringements will be taken
seriously
POSITIVE
COMMUNICATION
CHOOSE BATTLES
£ Size of opponent? Publicise any settlements as
part of a proactive IP strategy
Naming and shaming
M & S t-shirt on left ACID member Rachael Taylor’s hand drawn design on right. Rachel owned the copyright in her work
Settlement: Confidential agreement quickly drawn up
Defamation
Result: Speedy end to major high street retail look alike - within 24
hours Claire’s Accessories removed the alleged copy from
their website!
KNOW THE RISK FACTORS
Anti Copying in Design
We champion original design, its protection and enforcement and work on behalf of our members as a leading UK campaign group for design law reform.
15 year ACID campaign resulted in 2014 IP Act and intentional infringement of a registered design is now a crime
Anti Copying in Design
3D Printing – Rethink IP
Historical evidence – emerging technologies provide easy opportunity for criminals
Why is 3D printing a counterfeiters best friend?
Technical & Legal Solutions
Anti Copying in Design
3D Printing – Rethink IP
Thought leaders?
Anti Copying in Design
[email protected] @DidsMdcdonald
Introduction to Unilever
• 55% of business in aspiring markets
• 252 factories globally
Internally: • Have you communicated the problem effectively to the right
people within the organisation? • Have you secured the budget? • Do you have a sponsor at the C-suite level? • Is this a “global issue” within your organisation?
Externally: • Do you understand the “source” of the counterfeits? • Do you understand the counterfeit supply chain? • Are you focusing at the right points of the chain? • How effective are the resources in the market? • How well are you working with them?
Desk and visit based analysis of the market;
map risk
Join WCO IPM & Record TMs
with Customs
Build relationships
Gather intelligence
benchmark with
China Customs 2012 - Enforcement by IPR Type
• Over the last 15 years, China has improved its IP laws and enforcement • Between 2010 and 2014 it ran annual “special programmes” for police (PSB),
Customs (GACC) and/or administrative authorities (AIC) which included at least one IPR based KPI
• The latest detentions statistics from China Customs are worrying: • 2014: detentions 23,860, seizures 91,965,548 pieces • 2015H1: detentions 8,162, seizures 35,838,658 pieces
• Having locally based Chinese speakers running your BP programme – preferably employees – is one of the key factors in delivering consistent success
“Intermediaries - from express shipping firms through to online search
engines - are now a central part of the global economy. They must ensure
they have adequate systems in place to address growing counterfeiting
and piracy risks.” Jeffrey Hardy, Director ICC BASCAP
The role of intermediaries to facilitate counterfeiting
• A wide range of counterfeit goods tend to leave China by sea – fertilisers, FMCG, footwear, spare parts
• China Customs is the only customs authority in the world that is empowered to inspect goods prior to export
• This right should form a key cornerstone in your China export strategy
• At the same time, BASCAP is engaging with ocean vessel intermediaries to try to improve their KYC and due diligence programmes thereby limiting the volumes of counterfeits loaded; this will take time
Tackling the counterfeit supply chain
• The quick communication of information between BP teams across borders enables shipments to be intercepted in transit (subject to laws) or in destination markets
• The Middle East and EU are often used as transhipment hubs to disguise the origin of shipments
• In many Middle Eastern countries it is not possible to record TMs with Customs; relationship building with the ultimate goal of signing MOUs with the enforcement authorities is a good approach
• The new EU Trademark package coming into force in April will include provisions to detain counterfeit goods in transit
• Its effectiveness will rely to an enormous extent on the skill of the officers profiling the entry data; WCO’s IPM tool enables rights holders to provide 92 Customs authorities with useful data to make profiling more effective
• It will also depend on the TM owner having IP rights in both the transit country (any member state) and the destination market – potentially a limitation on use by SMEs
• It is unclear what the UK’s position would be in the event of Brexit
Continuous analysis, review and improvement
• Counterfeiters are continuously adapting and changing their modus operandi – you need to do the same
• Effective law enforcement officers are promoted – you need to be ready to work hard with their replacement
• Develop an approach to connect the online brokers / sellers on the key marketplace sites to the offline manufacturers
• Packaging innovation features and technology should form part of your approach to allow for speedy verification
• Understand your waste management chain; ensure that there are no loopholes that can be exploited
• Build your external engagement programme with short, medium and long term issues in mind in all high and medium risk markets and anticipate the moves of your business into white spaces
• Use your data to promote your success to senior stakeholders
GOOD LUCK!
Top tips for anti-counterfeiting strategies
Fully understand the problem
relevant rights in
advance
3D printing, mobile…
Rachel Alexander – Wiggin LLP
Difficulties of enforcing against counterfeiter
Dynamic methods of selling counterfeit goods
Multiple routes of access to consumers
5
What are the routes to market?
What is the level of infringement?
Which intermediaries are being used?
6
Intermediaries
Often “best placed” to take action
Recital 59 Info Soc Directive (2001/29/EC)
Art. 11 Enforcement Directive (2004/48/EC)
“Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries
whose services are used by a third party to infringe an intellectual property right....”
7
Hosting providers
Not liable under EU law provided:
No actual knowledge of illegal activities;
If obtain such knowledge, act expeditiously to disable access to infringing content.
Take down notices – short term solution?
“Bulletproof” hosts
Action can be sought on expedited basis
Extends to sites operated outside the US
8
Over 100 piracy sites now blocked
Use falls by around 77% within 2 months of the implementation
Cartier v Sky – principles applied to online trade mark infringement
Threshold conditions:
Use of the ISPs’ services to infringe
Actual knowledge
Reluctant to offer assistance
Google’s policies apply to copyright but not to trade mark infringement
Legal action taken in other jurisdictions:
Allostreaming
Equustek
Canada – Anti-Fraud Centre
“RogueBlock”
10
To keep up with counterfeiters, enforcement needs to keep up with technology.
Anti Copying in Design
VC of the Alliance for Intellectual Property
23 February 2016
Intellectual capital is a critical asset, the DNA running through most
businesses whether small or large.
Anti Copying in Design
enriching our lives as consumers
UK Design a success story, punching above our weight
34% in 5 years Worth £81.4 billion 350,000 UK designers mainly micro and SME Export increase by 76% since 2009 For every £1 invested in design business return £4 in net operating profit
“imitation isn’t flattery if it
costs
you YOUR business”
…. tackle IP issues from a position of strength with a proactive IP strategy and
SHOUT ABOUT IT!
environment
Industry-led solutions
Anti Copying in Design
1000’s of designers from diverse sectors. ACID is committed to fighting IP theft and safeguarding innovation to ensure that today’s & tomorrow’s growth creators live in a safer trading environment with job certainty
Thousands of settlements, the majority of them on
unregistered design rights
Artists Bridal Ceramics Childrens’ wear Design Agency Education Fabrics & Textiles Fashion Fine Art Fires & Fireplaces Floor Coverings Furniture Garden Products Giftware Graphics Greetings Cards Interior Accessories Interior Design Jewellery Kitchen & Bathroom Lighting Photography Product Design The Arts Toys
Louis Pasteur
strategy will help in handling
copycats, knock offs and cheap
imitations
Registration provides stronger prevention against copying
What is a design? “design” means the appearance of the whole or a part of a product resulting from the features of, in particular, the ...
DETERRENCE
shape
texture
colour
lines
materials
ornamentation
contours
REGISTRATIONS
National
European
World
CONFUSION!
examination by the Supreme Court.
Clarity is required on what is and what isn’t acceptable to rely on in a registered design
case .
Design – what is and isn’t protected with unregistered and registered design?
Anti Copying in Design
Safer online trading
ACID Marketplace PROMOTES & TRACKS
Anti Copying in Design
evidence and
Seek advice –
Relying on a registered design? you don’t have to prove copying. If unregistered design gather your design audit trail evidence (ACID Design Data Bank). Power of letter before action with supporting evidence often enough to settle a case
If relying on unregistered design do you have an IP audit trail?
Anti Copying in Design
trail:
Signed and dated drawings. Helps if they are held by an independent 3rd
party – ACID? Solicitor, IP AdvisorSigned, dated, drawing
number, any registrations ©
If you don’t want to be copied say so!
And shout
about it!
POSITIVE
COMMUNICATION
POSITIVE
COMMUNICATION
All intellectual property rights (and images, text and design of the website/brochure are and will remain the property of Acnolee Ltd. Any infringements will be taken seriously
www.acnolee.co.uk
Anti Copying in Design
“Naming & Educating!” ACID has had 1000’s of settlements & publicise them all even if there is
a confidentiality agreement – there are
ways around this! Social Media – spot the copy? Original or copy?
/ ( / ) Innermost Ltd / / ( / ) Innermost Ltd /
All intellectual property rights are and will remain the
property of innermost. Any infringements will be taken
seriously
POSITIVE
COMMUNICATION
CHOOSE BATTLES
£ Size of opponent? Publicise any settlements as
part of a proactive IP strategy
Naming and shaming
M & S t-shirt on left ACID member Rachael Taylor’s hand drawn design on right. Rachel owned the copyright in her work
Settlement: Confidential agreement quickly drawn up
Defamation
Result: Speedy end to major high street retail look alike - within 24
hours Claire’s Accessories removed the alleged copy from
their website!
KNOW THE RISK FACTORS
Anti Copying in Design
We champion original design, its protection and enforcement and work on behalf of our members as a leading UK campaign group for design law reform.
15 year ACID campaign resulted in 2014 IP Act and intentional infringement of a registered design is now a crime
Anti Copying in Design
3D Printing – Rethink IP
Historical evidence – emerging technologies provide easy opportunity for criminals
Why is 3D printing a counterfeiters best friend?
Technical & Legal Solutions
Anti Copying in Design
3D Printing – Rethink IP
Thought leaders?
Anti Copying in Design
[email protected] @DidsMdcdonald
Introduction to Unilever
• 55% of business in aspiring markets
• 252 factories globally
Internally: • Have you communicated the problem effectively to the right
people within the organisation? • Have you secured the budget? • Do you have a sponsor at the C-suite level? • Is this a “global issue” within your organisation?
Externally: • Do you understand the “source” of the counterfeits? • Do you understand the counterfeit supply chain? • Are you focusing at the right points of the chain? • How effective are the resources in the market? • How well are you working with them?
Desk and visit based analysis of the market;
map risk
Join WCO IPM & Record TMs
with Customs
Build relationships
Gather intelligence
benchmark with
China Customs 2012 - Enforcement by IPR Type
• Over the last 15 years, China has improved its IP laws and enforcement • Between 2010 and 2014 it ran annual “special programmes” for police (PSB),
Customs (GACC) and/or administrative authorities (AIC) which included at least one IPR based KPI
• The latest detentions statistics from China Customs are worrying: • 2014: detentions 23,860, seizures 91,965,548 pieces • 2015H1: detentions 8,162, seizures 35,838,658 pieces
• Having locally based Chinese speakers running your BP programme – preferably employees – is one of the key factors in delivering consistent success
“Intermediaries - from express shipping firms through to online search
engines - are now a central part of the global economy. They must ensure
they have adequate systems in place to address growing counterfeiting
and piracy risks.” Jeffrey Hardy, Director ICC BASCAP
The role of intermediaries to facilitate counterfeiting
• A wide range of counterfeit goods tend to leave China by sea – fertilisers, FMCG, footwear, spare parts
• China Customs is the only customs authority in the world that is empowered to inspect goods prior to export
• This right should form a key cornerstone in your China export strategy
• At the same time, BASCAP is engaging with ocean vessel intermediaries to try to improve their KYC and due diligence programmes thereby limiting the volumes of counterfeits loaded; this will take time
Tackling the counterfeit supply chain
• The quick communication of information between BP teams across borders enables shipments to be intercepted in transit (subject to laws) or in destination markets
• The Middle East and EU are often used as transhipment hubs to disguise the origin of shipments
• In many Middle Eastern countries it is not possible to record TMs with Customs; relationship building with the ultimate goal of signing MOUs with the enforcement authorities is a good approach
• The new EU Trademark package coming into force in April will include provisions to detain counterfeit goods in transit
• Its effectiveness will rely to an enormous extent on the skill of the officers profiling the entry data; WCO’s IPM tool enables rights holders to provide 92 Customs authorities with useful data to make profiling more effective
• It will also depend on the TM owner having IP rights in both the transit country (any member state) and the destination market – potentially a limitation on use by SMEs
• It is unclear what the UK’s position would be in the event of Brexit
Continuous analysis, review and improvement
• Counterfeiters are continuously adapting and changing their modus operandi – you need to do the same
• Effective law enforcement officers are promoted – you need to be ready to work hard with their replacement
• Develop an approach to connect the online brokers / sellers on the key marketplace sites to the offline manufacturers
• Packaging innovation features and technology should form part of your approach to allow for speedy verification
• Understand your waste management chain; ensure that there are no loopholes that can be exploited
• Build your external engagement programme with short, medium and long term issues in mind in all high and medium risk markets and anticipate the moves of your business into white spaces
• Use your data to promote your success to senior stakeholders
GOOD LUCK!