Don’t underestimate the counterfeiters: that was the message from Part 3 of this year’s Annual Conference, which was titled Fighting For Peace and Justice.

Panellist Gonzalo Barboza, Arochi & Lindner, Spain (member of the MARQUES Dispute Resolution Team) said deterrents do not work in stopping counterfeiters: “Criminal enforcement is not effective in many countries. More and better work needs to be done, including coordination, enforcement and collaboration: authorities, brand owners, legal practice, payment companies and marketplaces together need to become part of the solution. Even competitors need to work hand in hand against the common enemy.” Rien van Diesen, Seconded National Expert, Europol, The Netherlands agreed: “The outcome of court cases is not effective. Something needs to be done.”

Counterfeiting case studies

May-Britt Kroll, Senior Global Brand Protection Manager, Coty Beauty Germany GmbH, described several cases that demonstrated the ingenuity and tenacity of counterfeiters. One started with the investigation of a grey market wholesaler in Miami with sales in several countries. After six years, the production facility in Spain was tracked down and the boss located in France. Thirteen people were involved and ultimately four were sentenced. “It was an entire supply chain we had to break up,” she said.

Lunch at the World Forum

In another case, in the UAE, raids had to be carried out at night and about 30,000 items were taken away in trucks, while in another in China the warehouses were disguised as normal apartments. “We had to work very closely with investigators to investigate and start legal proceedings. The environment was unbelievably dirty,” said May-Britt.

Gonzalo also shared a case study from Spain involving the simultaneous raid of four warehouses. He stressed the importance of sharing intelligence: “You need to work together. If you become too territorial, the end result may not be what you want.”

The panellists agreed that counterfeiters can typically produce counterfeits within three months, aided by 3D printing, rapid distribution and improved infrastructure. They also use long supply chains to cover their tracks “These are not lone wolves,” said Gonzalo. “They know the rules and how to re-invent themselves. We’ve seen it many times.”

He said emphasising product safety can help get authorities’ attention: “It’s important to try to use safety as an advantage. If you present your concern properly, the authorities can raise the priority.” Rian agreed, and added that safety is also very persuasive before courts. He described how Europol operates and said that IP owners/representatives should join briefing sessions if possible, share information they have, build solid cases and work with trusted partners.

The session was chaired by Anja Franke, Grünecker Patent Attorneys and Lawyers, Germany (member of the MARQUES Anti-Counterfeiting and Parallel Trade Team). The panel also shared some examples of effective anti-counterfeiting awareness efforts, including a Mercedes-Benz video showing the difference between genuine parts and counterfeit parts.

CJEU highlights and lowlights

In the day’s final session, Peace and Justice from Luxembourg, Tobias Cohen Jehoram, De Brauw Blackstone Westbroek, The Netherlands (member of the MARQUES Council) and Carles Prat, IP Lecturer at the University of Alacant/Alicante, Spain, discussed recent CJEU and General Court cases in a panel chaired by Donald Schnyder, Wild Schnyder, Switzerland (member of the MARQUES Programming Team).

The cases discussed were:

• Case C‑714/18 P ACTC GmbH v EUIPO/Taiga AB (tigha v TAIGA)
• Joined Cases C–720/18 and C–721/18 Ferrari SpA v DU (genuine use of TESTAROSSA)
• Case C-833/18 SJ, Brompton Bicycle Ltd v Chedech/Get2Get (copyright, technical function)
• Case T-663/19 Hasbro, Inc. v EUIPO/ Kreativni Događaji d.o.o. (MONOPOLY and bad faith) – recently appealed to the CJEU as Case C-373/21
• Joined Cases C-449/18 P and C-474/18 P EUIPO/ JM - EV e hijos v Lionel Andrés Messi Cuccittini (MESSI v MASSI)
• Case C-184/21 Christian Louboutin v Amazom.com Inc. (pending, liability of platform providers)
• Case C-809/18 P EUIPO/Jerome Alexander Consulting Corp. v John Mills Ltd (MINERAL MAGIC, Article 8(3))
• Case C-204/20 Bayer Intellectual Property GmbH v kohlpharma GmbH (pending, reboxing)
• Case C-490/19 Syndicat interprofessionnel de défense du fromage Morbier v Société Fromagère du Livradois SAS (geographical indications, shape/appearance of product)

There were also some questions for the audience. The results of the votes were:

• Do you feel that the standard of “an independent sub-category” is workable in practice? 47% Yes, 53% No.
• Do you agree with the ruling in the MESSI case? 76% Yes. 24% No.
• Will the ECJ put more responsibility on market places like Amazon? 74% Yes. 26% No.
• Do you agree with the fromage Morbier ruling? 78% Yes. 22% No.

The hybrid Annual Conference continues with a full day of sessions tomorrow (Thursday), starting at 09.30 CEST. Follow #MARQUES35 on social media for the latest updates.

Photos: Valerie Kuypers