This Fashionista has lost count of the number of times that counterfeit goods have been spotted whilst on holiday; counterfeits are a huge problem. Until recently, fake goods transiting the EU from one country outside the EU to another third country could not be declared counterfeit at law and had to be allowed to pass through the EU country, even if the goods were blatantly infringing both EU trade marks and EU Member State registered trade marks. This was confirmed in a recent case involving Nokia (concerning fake mobile phones being sent to Colombia from Hong Kong via Heathrow Airport) and was even recognised as “not satisfactory” by the lead judge.
Thankfully, a new EU Trade Marks Regulation and Directive has closed this gap and now EU trade mark holders can prevent third parties from bringing, in the course of trade, goods coming from third countries bearing unauthorised trade marks that are identical or essentially identical to registered trade marks, even if the goods are not intended to be sold in the EU. This is good news for brands, but practically speaking how can you help customs stop those infringing articles at the boarder?
Enforcing your rights
The European Intellectual Property Office’s secure “enforcement database” (EDB) is free to use and allows rights holders to file an automatically generated application for action with the relevant customs officer if they suspect that their products are being infringed across any form of intellectual property right. The benefit of this service is the speed of being able to alert customs to potential infringements as well as the ability to stay informed about suspicious cases detected by enforcement authorities.
There are also paid-for-services that provide an enhanced user experience such as independent specialist consultancies like Brand Enforcement UK or the Interface Public-Members group’s global anti-counterfeiting platform. However, to use all these services effectively it is crucial that rights-holders ensure that their products can be authenticated, for example through a serial number, barcode or hologram.
This Fashionista hopes that the combination of the change in law and active policing by brand owners via the EDB against counterfeiters will result in less counterfeits on the market.
Article by Tom Errington