In-house counsel and law enforcement officials have said courier and shipping companies should take more responsibility in the fight against counterfeiting.
A mix of in-house counsel and directors at non-governmental and enforcement agencies told an EUIPO conference that all parties must work together, but some were split on responsibility for infringements and where liability should rest.
The topic of collaboration was the theme of this year’s International IP Enforcement Summit, hosted by the EUIPO virtually on June 22 and 23. The summit focused on strengthening cooperation between rights owners, intermediaries and enforcers.
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All at sea
One session primarily centred on liability for online counterfeit sales.
Stella Padovani, IP and brand protection manager at fashion company Moncler, said that the time has come to clarify the responsibility of other intermediaries beyond e-commerce marketplaces.
Padovani was joined by Steve Francis, director of the National IPR Coordination Center in Washington, DC; Graham Clemence, senior director for global IP enforcement at Alibaba in the UK; and Elsa Pilichowski, director of public governance at the Office for Economic Co-operation and Development in Paris.
“Where we continue to see a lot of work that still needs to be done is on the responsibility of courier companies and shipping companies,” Padovani said.
She suggested that laws should include a clear clause stating what these companies’ responsibility is when they are found to have transported a counterfeit product.
“We tried to launch a pilot programme before the pandemic to engage shipping companies on a voluntary basis. Often, they say that they cannot check all boxes and all consignments, but you do see examples of the same company being found to have transported infringing goods.”
Those discussions are ongoing. However, Padovani added that brands themselves do rely on shipping and courier companies, so working together is still beneficial.
During another session on international trade, Agata Gerba, deputy head of trade at the European Commission, noted that a lack of resources makes it difficult for customs authorities to identify illicit goods.
This is particularly true when it comes to checking small parcels passing through customs, she noted.
She added that intermediaries could share information with couriers and shipping companies, noting that an electronic database with shared access and where details of bad actors are flagged is one possibility.
This question of liability could also be extended to internet service providers (ISPs), which should also take extra responsibility for the types of websites they enable access to, Padovani said.
In an earlier keynote address, Benjamin Lotz, director of content protection at broadcaster Sky in Germany, said cooperation varies between different platforms and ISPs on how they handle takedown requests.
Lotz identified three major ways consumers are able to consume pirated content: via the “digital high street”, where content is shared by anyone on social media; the “open web”, including file-sharing websites; and IPTV, sophisticated subscription-based TV services that provide set-top boxes that transcend territorial broadcasting rights.
Sport is the most commonly infringed type of content, he added. “What we need is a clear obligation for hosting providers to automatically remove infringing content in as close to real time as you can get. For live content, we need live responses.”
Lotz added that responsiveness differs between member states. He said that the ideal situation would be for each nation to allow for flexible short-notice injunctions. “You cannot reasonably have a fragmented approach to this.”
Back on the panel session, Clemence at Alibaba said the company has been working with brand owners for several years and has developed its own protection programmes.
This also extends to offline enforcement, including sharing information with law enforcement agencies to crack down on manufacturing hubs, he added.
“Not all platforms provide that service and so then the discussion of regulation comes up. However, you can have good IP protection programmes without regulation, but it involves the cooperation of everyone.”
The notion that effective enforcement is a two-way street was also the view of Annabelle DanielVarda, director for trademarks at Google in California.
She provided her own company’s perspective in a separate talk.
Google has started using machine-learning technology to detect bad actors using its Google Ads platform, DanielVarda said.
However, she noted that while Google will act when alerted – it removed 3.1 billion suspected infringing listings on Google Ads in 2020 – the onus is also on brand owners to ensure their requests are clear.
“Having good notices is really important. We get a lot of challenging notices that are incomplete or have not been compiled in the correct way – and that really slows down the process.”
The National IPR Coordination Center has also noticed how collaboration can speed up the enforcement process.
In 2021 alone, it seized more than 26 million counterfeit respirators purporting to be made by healthcare manufacturer 3M.
“Without effective partnership with brands and law enforcement, those would never have been seized,” Francis said.
Despite the conversation focusing on the EU, panellists were keen to stress that global engagement is key.
Francis at the IPR Center said leveraging a strong partnership with customs authorities in China and Hong Kong is crucial. Around 85 to 90% of seizures come from that part of world, he added.
Panellists also welcomed the EU’s commitment to develop an anti-counterfeiting toolbox, announced last year.
According to the commission, the toolbox will specify principles for how rights owners, intermediaries and law enforcement authorities in the EU should act, co-operate and share data. There is no set time yet for when the toolbox will be launched.
However, panellists noted that for it to be truly effective, it must focus beyond the EU.
Graham at Alibaba said the initial phase after roll-out will be crucial. “If it proves effective, it certainly should be widened to include China and the Middle East.”
Elsa Pilichowski, director of public governance at the Office for Economic Co-operation and Development, said part of the challenge is that global issues are often dealt with by domestic regulations.
She added that fighting the dark side of economy while also ensuring trade and economic development is not stifled poses a big challenge.
Padovani at Moncler said she hopes that the toolbox will require brand owners to have less responsibility than they do now.
“We are the sole party that can say for sure if a brand is counterfeit. Once we hand over that information to them [law enforcement or customs], we would really like to see cooperation continuing without having to ask authorities in each and every country, or to carry out test purchases as has sometimes happened.”
Rounding off the summit during closing statements, Ibán García del Blanco, a member of the European Parliament and vice-chair of the parliament’s Committee on Legal Affairs, clarified that the forthcoming Digital Services Act (DSA) will call for more liability and responsibility for intermediaries.Thierry Breton, commissioner for the internal market at the commission, told the conference that the DSA will ensure that the rules that apply offline to ensure consumer safety will also apply online.
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