A Long Way to Go for Anticounterfeiting

Xenia Li, China IP,[Comprehensive Reports]

-- An Interview with Dan Plane, Committee Member of INTA Anticounterfeiting Asia Committee
Counterfeits are one of the most challenging problems for brands and enterprises. In a report published on April 18, 2016, the Organisation for Economic Co-operation and Development (OECD) stated that trade in counterfeit goods has increased by more than 80 percent in five years, increasing from US $250 billion annually in 2008 to more than US $461 billion in 2013.
INTA's Anticounterfeiting Committee (ACC) works to develop and advocate for related anti-counterfeiting policies and to promote better cooperation between the private and public sectors to advance protection against counterfeiting. This is done primarily in three ways:
· Developing and advocating INTA's positions and board resolutions on anti-counterfeiting legislation, policy, and enforcement at the national, regional, and international level. Facilitating industry cooperation with administrative and law enforcement bodies to build effective mechanisms against counterfeiting networks. Having a presence in international anti-counterfeiting conferences.
· Raising awareness of government officials and consumers about the serious threats posed by counterfeiting to their health and safety, economies, and national security. Supporting INTA's Unreal Campaign in the United States and its expansion to Canada and Latin America.
· Communicating anti-counterfeiting issues and achievements via INTA communication channels.
The ACC is INTA's largest committee, with 265 members from more than 60 countries, lead nine regional subcommittees. All of these regional subcommittees focus on issues and actions that are unique to their region, as well as supporting the ACC and INTA's overall goals. They also work together on two Global Task Forces affecting all regions, one focused on online counterfeiting (led by Erika Yawger, Apple, USA) and one focused on anti-counterfeiting policy.
The ACC has three different subcommittees in Asia: the China subcommittee, the East Asian subcommittee and the South Asian subcommittee. The China subcommittee focuses on counterfeiting in China and aims to build bridges between the government and various stakeholders.
The work of the committees include reviewing, commenting on legislation, understanding legislation, lobbying governments, positioning papers together to express the interests of the organization and its members, to increase collaboration between brand owners and stakeholders, law enforcement, administrations, and enforcement authorities. Most importantly, to work together to solve the problem of counterfeiting.
On December 5-6, 2019, the first breakout session themed "The Future is Here: IP Development in Aisa" kicked off the BIP Asia Forum held in Hong Kong. Dan Plane, Committee Member of INTA Anticounterfeiting Asia Committee, shared his insights. Dan is experienced in all facets of intellectual property law, in particular, anti-counterfeiting and IP enforcement. Of particular note is his wealth of experience in designing and managing regional intellectual property programs and IP security programs in supply chain and distribution contexts. China IP interviewed Mr. Dan Plane at the BIP Asia Forum.
He introduced the work of INTA and the INTA China Anticounterfeiting Committee.
He noted that INTA's position on anti-counterfeiting work was to instruct that governments at the national and international levels, strengthening their anti-counterfeiting laws and enforcement, cooperating more effectively to eliminate the serious threats posed to consumer's health and safety, as well as to national economy and security.
Dan Plane stressed the importance of strong anti-counterfeiting measures and raising awareness of the dangers of counterfeiting. He noted that the INTA Anticounterfeiting Committee, through its partnerships with governments and associations, advises legislation, regulations and trade agreements around the world to strengthen national and international law enforcement mechanisms to combat counterfeiting.
He further explained, "certainly the biggest tasks are understanding the current state of the law and working together to lobby, making comments on new versions of the law, taking part in the comment process as laws are being promulgated. Then, it is essential to set up training organizations and training opportunities between brand donors and stake owners, IP experts, government authorities, judges to bridge that gap between various stakeholders in IP and anti-counterfeiting."
With regard to the problem of counterfeiting in China, Dan Plane believed that the Chinese government had realized the seriousness of the problem and had made efforts to bring China's intellectual property laws in line with international standards, especially the criminal coercive measures and penalties to deal with counterfeiting. Dan Plane also put forward his own suggestions on China's anti-counterfeiting law enforcement: "I think China can try to learn from the experience of other countries. For example, India hired the former director of the National Intellectual Property Coordination Center of the United States to draft a guide on how to establish a federal intellectual property center. It is a model that can be replicated in any country to promote coordination between stakeholders and government departments at the national level, and to enhance cooperation among countries. Information sharing and other cooperation can not only further facilitate cooperation between stakeholders and governments at the national level, but also contribute to coordination at the international level and among relevant industries as well as the targeted public. Individuals who buy fake goods may feel that fake goods are a cheaper and better choice when they first come into contact with fake products, so it is necessary to help them really understand the harm and impact of counterfeit products. In cases in China, where there are multiple individuals involved in a criminal network across multiple provinces in multiple cities, it is extremely difficult to get coordination at a national level. I think China is making improvements in that, but I think a model like this, it could be beneficial."
In the interview, Dan Plane also stressed the importance of international cooperation in anti-counterfeiting work. He pointed out that nowadays, it is becoming rare that the production and sale of counterfeit goods are completely limited domestically, and there are more cases in which the chain of interest of counterfeit goods extends to countries all over the world. For example, it's quite likely that the counterfeited goods are being exported. It might be that the products are counterfeited and manufactured outside of China and are being imported to China because Chinese consumers have moved very much to an online space due to the enormous amount of parallel imports and procurement service in China. "So there is almost inevitably an international component to any of these issues that we're discussing, whether it's goods going out of China, goods coming into China, or money changing hands. Especially with regard to tax evasion, money laundering, basically organized crime at an international level are more commonly seen."
To solve the problem of transnational counterfeiting, Dan Plane pointed out that all countries can benefit from cooperation at the international level. In this regard, it is also essential to establish an organization with expertise and understanding of how counterfeiting networks operate in order to work together to combat counterfeiting.
In addition to the government and international level of anti-counterfeiting measures, Dan Plane also gave his advice at the corporate level. "First of all, China has always adopted the first-to-file jurisdiction. So obviously you've got to file for your rights. Secondly, it is necessary to work with other brand owners. I think there's always strength in numbers. They might be competitors in their day-to-day work, but in the work of anti-counterfeiting, they're partners. Thirdly, it would be helpful for brand owners to look at organizations, such as industry organizations for their particular, to ensure information sharing, and that as an industry, their voice is communicated to the government. These are the efforts of the INTA Anticounterfeiting Committee, which has long been committed to providing practical solutions to counterfeiting problems for enterprises and brands in the Chinese market and building bridges between government and industry. "
From the legislation perspective, Dan Plane spoke highly of China's recent E-Commerce Law. He believed that "once the implementing regulations come out, we might have a better sense of how the online counterfeiting issues could be impacted, or the E-Commerce Law could really be brought to bear." In addition, Dan Plane said that China's new Trademark Law, which came into effect on November 1, 2019, was "a bit more interesting." He further explained: "to a considerable degree, the most significant development is the focus on bad faith in the registration of trademarks, it's a huge step forward and it's one that everyone's been pushing for a very long time. Two other interesting aspects are, first, the increase in the damages awards that can now be obtained in the context of trademark infringement cases. The other one is the introduction of a malicious prosecution standard where a pirate who applies for and registers a trademark and then attempts to use that stolen trademark against the actual brand owner can actually be penalized by the court. Hopefully, we'll see, as we've seen in the patent sphere where damages awards have been increasing, that we'll start to see that in the trademark sphere as well, bringing counterfeiting down and penalizing and punishing individuals who are engaged in this activity. "

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