team of specialists on ip, unece 4th annual session … of intermediaries. ... with trader but is...
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IPR EnforcementFederation of the Swiss Watch Industry
Team of Specialists on IP, UNECE4th Annual Session
Geneva, July 8
Federation of the Swiss Watch Industry
Swiss watch industry, not-for-profit, trade associationOver 500 members representing 200 brandsFH does not address distribution or supply chain integrity questions (competition issues)FH provides support regarding access to markets questions (trade negotiations, day-to-day questions)
IP Activities :• Over 35 years of experience• Protection of Swiss geographical indications• Enforcement of IPRights of its members (mandate)
Protection of Swiss GIs
Swiss Federal Ordinance on the protection of trademarks (register of watch producers)Swiss Federal Ordinance governing the use of the name « Swiss » for watches (Swiss movement, casing-up and final control in Switzerland)Collaboration with Swiss authorities (IPI, Consulates)Surveillance of tdk applications worldwide in class 14+ opposition proceedingsDirect measures against misuses on productsCertification marks in the U.S. and Hong Kong
FH activities in enforcement of IPRs
FH support the rights owners of 45 brands in the protection of their IPRs (Anticounterfeiting Group)
Exclusively trademarks and some designs
FH sets up pools of actions allowing:• sharing of costs• central point of contact for authorities• Better allocation of resources and « production » of
intelligence
FH activities in enforcement of IPRs
LobbyingAwareness campaigns
Private investigations / actions(raids with authorities)
Support to authorities worldwide(border measures)
FH activities in enforcement of IPRs
Technical laboratory
Internet Unit :Operational :• 2009: 179’002 auctions retrieved• 2009: 1’703 websites
targeted (20% success)Strategic :Data collectingand intelligence building Lobbying :Liability of intermediaries
Criminal environment: a shift
“known” trade routes from China, Russia, Central AsiaBig quantities in few consignments“Asian markets”, street vendorsExposure of importers – vendors = high risks
Purchase at homeBig quantities in huge numbers of consignmentsHard to detect – pressure on resourcesAnonymity of senders – sellersRole of intermediaries
Health & Safety hazards
Not an issue for luxury goods … or ?Conditions of laborSubstances which use is limited or prohibited (lead, cadmium, radioactive, allergen …)Use of violence / corruptionDistributed through the same chanels with other harmful products (fake medicine)Involvement of organized crime groups:• in the production – distribution• Financing other criminal activities• Laundering tool• Opportunistic industry
Internet „Intermediaries“
INTERNETINTERNET
HostproviderAccess Provider
Registrar (Domain names)
Service(s) provider
Different types
Service providers..
Sender Consignee
Service providers..
Empfänger
Service providers: different types...
Intermediaries: Transport
Intermediaries: Transport
Intermediaries: financial
Credit card issuers (Visa / Mastercard) :• Commission on each transaction• Request for information / no relevant information on
transaction statement (watch88)• Transaction relates to a counterfeit = unlawful :
« issuer accepts no responsability regarding the transactions… owner will have to settle the case with commercial partner… issuer concludes no contract with trader but is only an intermediary »WorldPay :Agreed to terminate the account but refused to provide information on the basis of data protection rules
Technical intermediaries for Internet
Louis Vuitton vs. Akanoc (host provider /9th circuit):« contributory liability »
« The standard applied to Copyright infringement claims (DMCA) can also be applied to trademark infringement claims »
« Defendants’ servers stored and served the data, including pictures, used by the websites [in China] that offered counterfeit goods for sale to U.S. customers. »
Technical intermediaries for Internet
Louis Vuitton vs. Akanoc (host provider /9th circuit):« contributory liability »
« The defendants, … were properly found liable for contributory copyright infringement because they had notice-based knowledge of users’ infringement and did not remove content they knew was infringing »
« In order to qualify for DMCA safe harbor:• adopt a policy prohibiting infringement; • reasonably implement that policy by designating an agent to
receive and respond to DMCA notices; • inform subscribers about the policy; and • terminate access for repeat infringers »
Technical intermediaries for Internet
Tiffany vs eBay (2nd Circuit):« Narrow standard of contributory liability »
“eBay's knowledge that some eBay vendors were selling counterfeit Tiffany goods is not a basis for a claim of direct trademark infringement against eBay, especially inasmuch as it is undisputed that eBay promptly removed all listings that Tiffany challenged as counterfeit (VeRO) and took affirmative steps to identify and remove illegitimate Tiffany goods. To impose liability because eBay cannot guarantee the genuineness of all of the purported Tiffany products offered on its website would unduly inhibit the lawful resale of genuine Tiffany goods”.
Technical intermediaries for Internet
Tiffany vs eBay (2nd Circuit):
“Tiffany failed to demonstrate that eBay was supplying its service to individuals who it knew or had reason to know were selling counterfeit Tiffany goods”
“Tiffany's demand letters and Buying Programs did not identify particular sellers who Tiffany thought were then offering or would offer counterfeit goods. And although the NOCIs [Notices of Claimed Infringement] and buyer complaints gave eBay reason to know that certain sellers had been selling counterfeits, those sellers' listings were removed and repeat offenders were suspended from the eBay site.”
limitation of liability in ACTA copied on U.S. law?
Other intermediaries: properties’owners
Civil actions against property owners:
• Canal Street in New York
• Silk market in Beijing
• Asia markets in Czeck Republic
Examples of obstacles
Requests to produce original products to the authorities for « comparison » (Turkey, Mexico, Dubai, etc.)
Unnecessary formalism (translation and legalization of each and every document, ex: Dubai)
Corruption
Counterfeiting is still considered a petty crime by many governments
Thank you for your attention !
Federation of the Swiss Watch Industry FH Rue d'Argent 62502 BienneTél. +41 (0)32 328 08 28Fax +41 (0)32 328 08 80
www.fhs.ch [email protected]