David: Thank you, everyone, for joining us today. Before we get started I just wanted to attract your attention to the sub-titled feature at the bottom right hand side of the screen where it says 'Close Captions'. I suggest you try it. If you click on it and select sub-titles then you'll get the sub-titles throughout our presentation. My name is David Aylen. I'm the managing partner of Gowling WLG in Russia and I'm also co-head of our global brand protection group. This webinar is part of our series called 'Life Cycle of a Smart Idea'. Today's focus is going to be on how to set up a global anti-counterfeiting program for the very first time. We're going to do a case study for you. In the case study I'm general counsel at Hellranger. By the way, you may have heard of Hellranger before because we've done previous webinars using the same company in the case study. Hellranger sells ATVs, all terrain vehicles, boots and energy drinks. We make in China and India and we sell in the UK, North America and Russia. But we also advise on Eastern Europe and Egypt. To be honest we're pretty good at protecting our trademarks on a day to day basis. But now we've seen some fake Hellranger products, particularly boots and energy drinks, in the marketplace. And, frankly, we're not prepared for this. It brings in all kinds of international issues and we're not sure what to do. So I've asked my law firm to help on an emergency basis and my lawyer set up a team to help. So here we go.
Tania, thanks for taking my call. I've only got 45 minutes to talk because my CEO wants to see me. She wants to know what's the game plan to stop these fakes on the market. I've got to tell you I'm really not sure what to do so I really appreciate you bringing together people from your various offices around the world and I look forward to hearing from you, but keep in mind, I've only got 45 minutes to an hour so I really need quick and practical advice. Okay?
Monique: Great. Hello David. Happy to assist as always. Given your limited time we'll just focus on a few key considerations when setting up an anti-counterfeiting program. Before we begin it's important to understand that even the most robust program isn't going to eradicate your problem but over time an effective program will noticeably reduce counterfeits. I've assembled a team across several of our offices and together we'll explain the key preliminary considerations to you. First, we'll talk about program preparedness, for which we'll concentrate on two aspects. Evaluating Hellranger's current IPR protection and the planning around product assessments including developing counterfeit indicators. Then we look at how you might determine the scope of your program. Which countries you'll focus on, what products you'll focus on and the degree to which you'll go after them. Then we look at the types of investigation support you might employ, both bricks and mortar, and online. We'll then look at the need to make provision for online enforcement and we'll finish off with looking at collaborating with third parties. Partnering the customs, law enforcement and working with industry associations. One more point before we start, as you would expect there are additional concerns around counterfeit food items, including risks to consumer health and increased reputational risk. Dealing with counterfeit Hellranger energy drinks likely constitute regulatory offences in most of the countries where'd you see counterfeits. So I suggest we set up a call with Gowling's food and beverage team. Are you happy for me to set that up?
David: That's a good idea. I hadn't really thought of the regulatory angle associated with the energy drinks so I'd like to hear from them on that front. Let's set that up.
Monique: Great. Okay. So, the first step in setting up an anti-counterfeiting campaign is evaluating your existing IPR with a view to identifying any gaps in coverage. As a starting point think about your current and your future market countries. Where your boots are produced, the multiple countries in your global supply chain and the routes by which your product get to market. Also consider whether any of these site countries might change. At a minimum, it's advisable to have registered trademark protection in your current and planned future market countries, plus all your countries of manufacture, production and finishing. We've taken a look at Hellranger's global trademark portfolio, and while Hellranger's filed trademarks in most of the countries where you've seen counterfeits, we've noticed that in China and in Russia the trademark registrations for your energy drink are still pending. Meaning Hellranger currently has no registered trademark protection there. Ivy, as a counterfeiting specialist in China, what are the options for Hellranger in the absence of registered trademark protection?
Ivy: Thanks, Tania. Hi, David. At the moment there are two options available in China here. The first is based on copyright registration, of course, and the other on product safety and consumer protection law. Compared with the time consuming trademark registration procedure I believe copyright registration to be the most efficient solution for now. A few may know that China is the signatory to the Berne Convention and a copyright arises upon creation, however, the right holder is entitled to voluntarily apply for the copyright registration here. A Chinese certificate of copyright registration is usually issued around 1 month and this can be expedited via copyright agents. So a copyright registration certificate hugely decreases your burden of proof. Assuming Hellranger owns the relevant copyright in it's logo, for example, once registered we can apply for customs recordal, which we will explain in more details later. We can now request the customs seizure of these infringing products. At the same time we can also initiate several proceedings against the infringers in relation to the copyright infringement and unfair competition. Then we can seek preliminary injunctions, bind the sale of infringing products.
Our team was recently successful obtaining a preliminary injunction for another of our clients in an anti-counterfeiting case. Generally speaking the preliminary injunction will apply until the final effective judgments. To take a long view, copyright registration is also a very good first step to block possible trademark squatting. Once it's registered we can use the copyright registration certificate as prima facie evidence of our copyright, our supplier rights. Such registration improves our chances of success in trademark opposition or invalidation proceedings against an infringer. As mentioned by Tania there's also laws adjusting the use of substances harmful to human health and safety and the counterfeit energy drinks may contain such substances or substances which otherwise fail to meet safety standards. If the evidence is sufficiently strong we will then file cases with a suitable PSB, that's the local police. Maria, given your experience in handling IP enforcement matters for clients in Russia, which is a complex jurisdiction in which to enforce, what can Hellranger do there in the absence of registration of the Hellranger trademark for beverages?
Maria: Thank you, Ivy and hello, David and hello, Tania. Copyright remains a valid ground of enforcement in Russia too. It is possible to proceed with enforcement action or cease and desist letter based on copyright in Russia as it is in China, however, obtaining trademark registration gives much more brand protection opportunities to the right owner. The great news is that an expedited trademark prosecution procedure recently introduced by the Russian Patent and Trademark Office may allow for obtaining trademark rights within much shorter period than before. If we compare with the standard trademark examination process taking 8 months longer, expedited procedure may allow for obtaining trademark registration within 2 months or even 1 month if there are no obstacles.
Monique: Great. Thanks, Maria. So, David, just to clarify, technically counterfeits are trademark infringing goods which incorporate an identical mark on identical goods. However, copyright and design protection can also prove effective in the fight against fake goods. If available design protection is especially useful in tackling unbranded clothed goods where, to evade detection, infringers import identical goods free of any trademarks, only applying the trademarks once the goods have entered the jurisdiction.
David: Well that's interesting. I've always focused on the idea that the trademarks on the product and it never really occurred to me that goods would cross the border without the trademark on it and then trademark would be applied later. So, it's really interesting that I can look to copyright for design protection as another way to help me. I'm especially interested because we're just about to launch a new product, a new boot, a sole with soul I call it, and I'd really like to hear more about this.
Kate: Hi, David. Perhaps we can take a look at Europe, first of all, and copyright is certainly an option for you in Europe. It could be very useful for the boot. It is not a registrable right in Europe. The right comes into being on creation. It's enforceable internationally through something called the Berne Convention. But it's going to be really important to ensure that Hellranger actually owns any relevant copyright. You need to remember the first owner is actually the creator. So if the packaging, the logo, the boot itself has been designed by a third party, for example an agency, then you must ensure that you would obtain an assignment of all of the intellectual property rights, including the copyright, and that needs to be in writing and signed and dated by the assignor.
Now, we also have a variety of design rights in Europe. You haven't mentioned owning any registered design rights but even if you don't own any registered rights we have an unregistered system that can be utilized in relation to the shape or configuration of the boot, with a whole or part of it. The appearance of a whole or the part of it, the lines, the contours, the colours, the shape, the texture or even the materials in the ornamentation of the boot. It is worth noting there are qualification requirements for design rights and they're based around place of residence, or the location of the business or the first marketing of the product itself. So we need to understand a little bit more about where the company and the designers are located and those requirements are in a state of flux at the moment until the post-Brexit arrangements, I'm afraid, are crystalized. So that's something we need to come back to chat to you about. If there are things that you want to do now there are urgent steps you can take. You mentioned infringements in France. Well in France our team has used a Saisie-contrefaçon procedure, effectively, to seize and record infringing goods as a means of obtaining evidence of the existence and extent of an infringement of IP rights. Monique, I don't know how that compares with the position in Canada, for example.
Monique: Thanks, Kate. There are similarities with the UK. Canada's also signatory to the Berne Convention and so copyright arises upon creation. But the concerns that you flagged, Kate, for the UK are also true here. Hellranger must own any relevant copyright. As assignment of the copyright, in writing by the creator, is essential. The good news is, David, in Canada it's actually quite easy and inexpensive to register copyright once your ownership is cleared and the copyright, as in other jurisdictions, can actually play an outsized role in your hot new boot and your sole with soul. The copyright would not protect your actual new boot or the sole with soul but it would protect the product images, the ad copy and your company logo. David, you can also protect your boot and the sole through industrial design in Canada. It's a first to file system which protects novel designs and is a 12 month grace period after disclosure. So it's important to seek protection at the time of the product launch. In other words, now is a good time, David, at the time of the product launch. There's no question that for Canada, as elsewhere, the gold standard is always registration. To own the registration of the trademark, of the copyright and the industrial design. But the good news in all of that is that the copyright can be obtained quickly, if the facts of ownership are known, and the trademark and industrial design registrations do take longer. In Canada, while you can take action in court based on unregistered rights it's more difficult from an evidence perspective and there's a risk that your rights would be restricted to a specific geographic territory, which in Canada, given the size of the country, would be a disadvantage. Jon, how does this compare to the UAE?
Jon: Thank you, Monique. Hi, David. So in protecting the new boot here in the UAE we can look at registered design protection, trademark protection, but the copyright options will be fairly limited. So with design protection, the UAE operates at global novelty requirement, so we'll need to make sure that for any design filing we're able to claim priority from an application filed before it's been made public. Also with designs it can take 5 to 7 years in order to obtain a granted design here. What this means is it's going to be a long term play in the designs for you and the design is unlikely to assist in the short term.
David: Jon, can I interrupt you for a sec?
Jon: Yeah, sure.
David: If I heard you correctly I think you said it took 5 to 7 years for design. That's a really long time, to be honest. We're a fast moving company and we don't think that far in advance. We're lucky if we think 1 or 2 years in advance. Is there anything else we can do in the UAE?
Jon: Well some good news and some bad news. I guess the bad news around copyright law, it's not going to be as effective as China. So the copyright law here offers protection to design drawings for the boot and for the sole but not for 3-dimensional products made from those design drawings that have been industrially massed produced. So because of that copyright will be very limited. There are relatively few design registrations here and so, again, in our experience the officials aren't as used to enforcing design rights as they are trademark rights. But the good news for the UAE is the officials will register 3-dimensional marks, trade dress and other non-traditional marks here relatively easily so without any issues being raised or objections, often than not. I am aware that there are a number of footwear designs already on the register here as trademarks, and also designs for soles, here in the UAE. We've also had experience of enforcing such rights through the onshore enforcement bodies. Customs can be reluctant to record designs or enforce 3-dimensional marks but onshore you can. The UAE courts have also recognized, in many cases, that 3-D marks can be registered here and that includes a case that we managed through the court causation last month. So, 3-dimensional trademark registration is a viable option and they can be obtained in 4 to 6 months so I would say to look at that to help the business.
David: Thanks, Jon. So it seems like the UAE's a pretty complicated jurisdiction. So what I think I'm hearing from you is I better have my trademarks registered way in advance and prepare for it that way. Did I get that right?
Jon: Yes. Yes, you have registration is key. Without those appropriate registered rights, or granted rights, in place the options will be limited for taking action here and now in the UAE. The enforcement authorities will not act based on unregistered rights or registrations you have in other classes, or other products, as they see that as a matter for the courts to take forward. That said, if we can obtain a court order we can go back to the enforcement officials to help have products removed. So your options are limited to an action before the UAE courts relying on unregistered rights and registrations in other classes. It isn't going to mean a swift resolution. Also the UAE courts are unlikely to issue an precautionary measure to seize the products as it's difficult and rare to obtain attachment orders in IP matters here. But in bringing an action before the courts we should have a decision from the Court of First Instance in 6 months or so. It's likely to be appealed. Most are and so by the time it goes to a Court of Appeal it's probably 12 months from that before there is a final judgment available for you to enforce. So it is key to have those registered rights in place in the UAE, but also generally in the MENA region, in order to support any enforcement program you put in place.
David: Thanks, Jon.
Monique: Thanks, Jon. So, David, having evaluated your IPR portfolio, and identified whether it needs bolstering, the other piece of program preparedness is the planning around assessments to determine whether the products are counterfeit.
David: Tania, why do I need to do that? I mean, I'm the general counsel. I know a fake when I see one from one of our products. Isn't that enough? Why do I have to do more?
Monique: That's a good question. Counterfeiters nowadays are both very sophisticated and very well financed and they can produce goods so closely resembling the originals that sometimes even rights holders cannot really tell the difference. While you and others at Hellranger may be able to accurately assess whether the goods are counterfeit, incorporating counterfeit indicators in your products, and their packaging, equips law enforcement authorities with the ability to weed out suspicious shipments meriting further examination. For ease and to minimize costs it's preferable if those indicators are easily discernable from photos. That way you avoid having to examine physical samples in order to make an assessment. Given that there's a beverage involved, it would also be prudent to set up lab facilities in case content testing is required.
So, a couple of other things. It's advisable to have several indicators of product so that even if the infringers catch onto one indicator you will still have others upon which to rely and it's a good idea to prepare a leaflet or a slide deck which highlights just a subset of both counterfeit indicators. Because then you can distribute that to law enforcement authorities during training and we'll come back to training later.
David: Okay, well this is a lot to take in but it's all very useful and I have to tell you that this is a unplanned situation for us. We don't really have a budget for it. So I'm just wondering how can I prioritize all this and still get something accomplished?
Monique: The good news is it is possible to achieve results with a well designed program and that leads us into the next consideration which is determining the scope of the program. Kate, would you take David through how to go about setting scope, especially given budget is such an issue?
Kate: Yes. Absolutely happy to. David, obtaining sufficient budget to tackle counterfeits is often a challenge. Even more so when you're in the middle of a pandemic. So in setting up the scope of your program geography is a really useful place to start. So thinking about which countries, which regions, do you need or want to focus your efforts on. Also, consider what type of IP rights you have available to you. The types of infringing product that you're dealing with. For instance, you may decide that you don't want to deal with promotional items like caps and backpacks. What are your tolerances? So do you want to set a volume threshold? Do you want to say that you are only going to take action in relation to certain volumes of infringing goods? Do some territories matter more to you than others? Now we've got limited time so let me just focus for a moment on geography by way of example.
So ideally your program should cover your current and your planned future markets, plus the countries where you manufacture, where you produce, where your finishing takes place, along with any trade hubs where your products are going to be passing through. Ideally you'd add to that any countries where you've seen counterfeits as well so that action can be taken locally. Now, I appreciate that could be a really long list. So the key having identified all of those is then to look at how that fits in with your commercial priorities. We can then decide how to allocate the time and budget accordingly with you so that we stay within a set scope that works for you.
David: Okay. Thanks, Kate and thanks for acknowledging the budget constraints because that's a problem for me and I think it's a problem for everybody. We have a bit of a mixed bag in terms of what we're doing. We manufacturer mostly in China but also a little bit in India. We ship direct to North America and to Europe but not always. Sometimes we trans-ship through the Middle East, the UAE in particular. In the upcoming days we're planning to launch in Eastern Europe as well as Egypt. I know that's a mixed bag but that's our business and I'm just wondering how that affects things.
Jon: Hi, David. Perhaps if I take forward with the Middle East to start with. So we coordinate and manage enforcement programs for clients across the MENA region. So I'll give you some insight on Egypt and some of the other countries. I guess the first thing to say is not all Middle East countries offer formal custom recordals. So some will require a court order followed by substantive court action in order to seize and destroy products. The UAE is a member of the Gulf Cooperation Council. So it's a trade block of 6 Gulf countries around the Arabian Gulf. The GCC, as it's commonly known, has a common customs law but it doesn't have a common IP recordal system. So the way in which counterfeits are handled through the GCC can differ across the member States. As I'll touch on a little later the UAE offers recordal systems whereas Saudi Arabia doesn't. It operates a memorandum of understanding process where rights holders, or their representatives, put in place MOUs with customs who will then monitor for suspect shipments for those companies.
Looking at Egypt, it's similar to the UAE. So swift and effective enforcement of unregistered rights is near impossible, unfortunately. The special 301 report from the USTR has been pushing for many years for Egypt to take steps to improve its customs position and the enforcement options for rights holders. There are no formal recordal systems in place there. Rights holders have to approach customs and obtain orders to direct customs to seize suspect shipments which then require a court action to take the matter through to a conclusion. I think an important point to bear in mind for Egypt, in particular, is that customs will expect you as the brand owner, or your representative, to bring forward information on suspect shipments. So, again, showing the importance of registered rights we have a current onshore issue, rather than customs in Egypt, where we have ongoing civil and criminal court proceedings for a client against an Egyptian company. In that case we managed to secure an interim order to seize materials to preserve so that they weren't destroyed at the outset of the proceedings. Fortunately that client did succeed in both matters so far. It's at the causation level with orders currently against the defendant, which include confiscation, destruction of infringing materials, the closure of the defendant's head quarters and also compensation and finds. Now it's taken around 4 years to reach this stage but it was due to the fact that the client had a strong registered portfolio in place in Egypt. This allowed us to get here. Without those registrations who knows what position we would be in at the moment. So I touched on the GCC trade block a little earlier. What I'll do now, I'll ask Maria to run you through a similar common Union that's in place in the Eastern European, region which is of interest to you.
Maria: Thank you, Jon. David, given your plans to expand into Eastern Europe the brand protection strategy for Russia is affected by its membership in Eurasian Economic Union.
David: Maria, let me interrupt you for a second. So, I don't understand because if I want to sell in Eastern Europe why should I be concerned about the Eurasian Economic Union?
Maria: Most counterfeits originated from the East and entering the Eastern Europe market by land and crossing the Eurasian continent and, in particular, such countries as Kyrgyzstan, Kazakhstan, Russia and Belarus. As a result the Eurasian countries become the main routes of counterfeit traffic consisting of Russia, Kazakhstan, Belarus, Kyrgyzstan and Armenia, the Union is based on the principal of the free circulation of goods and services across the borders of the member States. This means that any goods that have crossed the border of one of the member States circulate freely within the Union's territory without additional customs control. The creation of the unified customs register of the Union is already formalized. The unified register should allow for obtaining customs recordal in all member States at the same time by filing just one application and the unified register is expected to be launched in the near future. But for the time being it may be recommended to separately file applications for national registration and customs recordal in each member country of the Union. So, the point to note to here is that soon it will be faster and cheaper to put customs recordals in place for Russia and across the Eurasian region.
Monique: Great. Thanks, Maria. So, David, as we've explained in determining program scope there are numerous items to consider. We can certainly get into more detail about these when you've a little more time. Have you any questions before we move on to investigation support?
David: No. I don't think so and I'm interested in investigation support because we use investigators from time to time but we certainly don't have any kind of formalized approach or strategy about it. I'd like to hear about that.
Monique: Great. Okay, so subject to budget, when designing a program it's helpful to determine both the spread and the level of dealings in counterfeits. This can be gauged from bricks and mortar investigations in key markets including by test purchases and market sweeps, supplemented by online investigations on ecommerce sites and social media. Should your budget not extend to on the ground investigations customs recordals, about which we'll come to later, can provide some insight into where counterfeits are being traded. When engaging investigators do consider compliance considerations and investigations protocol is a good idea. Also, counterfeiters are highly organized and sophisticated and often work within very tightly knit groups. So engaging investigators who are sufficiently skilled in penetrating these networks is key. Local investigators can also support seizure efforts locally.
David: Tania, when you said compliance considerations what did you mean by that? I don't understand.
Monique: Sure. So this is to do with ensuring that the investigators you engage perform in accordance with your corporate governance infrastructure. Taking into account anti-bribery and anti-corruption considerations and so on. Awareness of the surveillance techniques employed by your investigators is also important. How do they collect evidence? How do they store it? All those sorts of things form part of this piece.
David: Okay, thanks. Getting back to investigations, we know a lot of counterfeits come from China and we also know that the UAE is a big hub for trans-shipments. So what about investigations there, in China and the UAE, is that possible?
Ivy: Yes, David. I totally agree with Tania that counterfeiters nowadays are highly sophisticated. When conducting investigations locally our goal is to work up a chain distinguishing between manufacturers and distributors and, where possible, we also target those label manufacturers as the sources of the infringing activities. To be more specific, as the first step our investigator will make contact with a distributor's sales staff and arrange a face to face meeting. The investigator will try to obtain details on the manufacturer during the meeting. But this sometimes requires additional monitoring as mentioned by Tania. Once the manufacturer is traced the investigator will conduct an onsite visit also checking if there are any infringing products being stocked. We also establish, during onsite visits, whether the locations are suitable for carrying out notarized purchases. I also want to echo with Tania's opinion that an effective program will notably reduce counterfeit over time. We have a very strong team for IP enforcement here in China.
For example, we have successfully helped our clients take down the infringing products in the Canton Fair and that client was very happy to see a dramatic drop from 34 in 2012 down to 0 in 2018, the number of infringes. Of course we also need to be especially cautious about the compliance issue when working with an investigator. I understand that there are also some restrictions for investigations in the UAE. Is that true, Jon?
Jon: Hi, Ivy. Yes there are. There are challenges around investigations here. There are certain restrictions, so for example, only police are able to carry out investigations against individuals and it's a criminal offence if anybody else is found to be investigating individuals. So something to be aware of. Where we're investigating target companies we work with external investigators who will carry out very similar investigations to those that we've just heard outlined by Ivy for China.
Monique: Brilliant. Thanks, Jon. So, David, you may be aware that there is a huge volume of counterfeits sold online nowadays. So in designing a program it's essential to consider both online investigations as well as making provision in your budget for online enforcement. In addition to online marketplaces counterfeits are now widely available via social media platforms. It's unsurprising that this trend has been occurring given the added scrutiny established online marketplaces are now under for counterfeits. Monique, could you offer David some general pointers on online investigations and then briefly cover online enforcement?
Maria: Of course. Online policing and investigations are key elements of an enforcement program. To understand the distribution networks and the online presence of any particular infringement, and to have a rational focus in what your legal spend is directed to resolving problems at its root, your goal will always be to identify the source, to support the enforcement and to disrupt the counterfeit channels of trade. It is also possible to engage artificial intelligence and automated processes to crawl the internet to identify the largest sellers of multiple listings and hopefully distributors and manufacturers. Focus on the ones with the largest presence online.
As Tania noted social media is becoming an increasingly important portal for its online purchases. Instagram, Snapchat, Facebook, TikTok and of course apps should definitely be covered in an enforcement strategy. Direct marketing to consumers is driving sales through social media and understanding the online activity will impact your strategy regarding who you should go to. For example, online marketplaces, or apps towards, or internet service providers, the social media companies or payment processors or even criminal authorities.
I'll lay an example. Amazon, which is a huge online retailer, has a brand registry where you can register your rights and certify the validity of your products. Other large online marketplaces, such as Alibaba, have their own IP protection programs. These programs can help to take down counterfeit. It's important to know that counterfeit retail stores also exist, especially online. We were very successful, recently, working with both Apple and Google Play in removing apps that were brazenly counterfeiting an online retail counterfeit client. Remember, David, that copyright can be a very powerful tool to take down online marketers. In particular, owning the copyright and the product photos, in your logos, in your ad copy can be a really fast way to obtain relief in an online scenario, particularly where you don't own adequate trademark registered rights yet.
David: Well thanks, Monique. That's very important. Thanks for bringing it up because online is very important for us. I guess it's important for everybody these days. We've been ramping up our online sales, and with the pandemic, now more so than ever. We're looking at international sales and shipments. We're looking at new payment programs so what I'm going to do is I'm going to go and revisit all our service agreements in that area and also look at our IP rights and domain names and make sure that I'm covered and if I have any questions I'll get back to you. Is that okay?
Maria: That sounds good, David. I also wanted to mention in an online enforcement setting that copyright can be very effective to take down content, or disable access to content, which can be very, very powerful. For example, a useful tool is a Digital Millennium Copyright Act, which is DMCA, especially for websites being hosted inside the USA but they can also effective for ... countries who also entertain the DMCA take down requests. As you noted, you'll be looking at your domain name strategy which is a good idea to make sure that you pick up the domain names and point them towards your main website. You may feel that as your taking down targets more pop up and you might want to focus on the more egregious targets. But trust me, David, the word will get out that you are a brand that doesn't want to be messed with on the counterfeit scale.
Monique: Thanks, Monique. So, David, now we've looked at investigation support and the importance of making provision in your budget for online enforcement, have you any questions before we move on to engaging with third parties when tackling counterfeits?
David: Thanks, Tania. I have a lot of questions but I don't have a lot of time. I've only got about 15 or 20 minutes before I have to go and see my CEO. So I think we should just move on for now but I'll get back to you if I have anything that I need to know about.
Monique: Okay. So engaging with customs and other law enforcement authorities can yield tangible results. Where available, customs recordals provide a ready made in. In a nutshell, recordals involve formally, or in some countries informally, notifying the local customs or other enforcement authority of Hellranger's eligible IPR, with the aim of that authority then monitoring for goods incorporating those rights. It's generally possible to record registered trademarks in jurisdictions where recordal is available. Whether the copyright, design or other rights can be recorded varies by jurisdiction. Recordals typically focus on imports but in some jurisdictions, including China, customs also monitors exports. Internal market monitoring is also possible in some countries including France, where you've noticed counterfeits, and the Czech Republic. You mentioned seeing counterfeits in the UK, France and Spain among other countries. So let's start with customs recordals there. Kate, please explain how the EU recordal system works and how recordals in the UK will be managed once Brexit transition period ends.
Kate: Yup. Of course, Tania. So the EU customs regime enables customs authorities in the EU member States to detain, seize and destroy goods suspected of infringing an intellectual property right, in a limited number of circumstances. So, goods can be seized at their point of entry, into or exit from, the customs territory of the EU. But not in respect of goods moving between two EU countries. So an owner of an IP right may file an application for action, or an AFA. It can do so at a national basis so file it with a national customs authority, for example, the UK or it can file it into a more EU member State. It's an EU AFA which then covers the whole of the EU.
Now, you mentioned Brexit and, David, that is something you need to be aware of because on the 31st of December the UK will cease its participation in the EU customs regime. What does that mean in practical terms? Well, for you it means that any existing AFAs made by the customs authority of an EU remaining 27 country will remain valid but it will no longer cover the UK. It also means that any existing AFAs made via the UK customs authority will cease to have effect in the remainder of the EU. So in order to preserve your coverage in the other 27 EU countries then you will need to ensure that you make a new application via one of those territories, after the 31st of December. It's also going to be no longer possible to obtain an EU AFA via the customs authority. Now I appreciate there's a lot of change here and a lot of acronyms. But the practical operation of the customs regime is going to be a little bit more complicated and is still yet to be fully clarified. For example, discussions are still taking place about what was going to happen in Northern Ireland. We do have full guidance, David, on the impact of Brexit on IP in the guide on our website. We are updating that all of the time. So it might be worth you keeping an eye on that. Monique, have you got a similar and perhaps a more certain regime in Canada at the moment?
Monique: Well, thank you, Kate. Yes, it is possible in Canada to file a request for assistance, an RFA, which flags the registered trademarks, the geographical indications and populate a person seeks to protect with the Canadian Border Services Agency, which will detain problematic shipments. The more information that you provide to the RFA, packaging, distribution network, known counterfeit sources, etcetera, the more helpful this is to the custom authorities. However, contrary to the EU and the USA, there's unfortunately no simplified procedure yet or forfeiture option in Canada. Rather, when a shipment is detained the customs authorities will contact legal counsel to ascertain whether the goods are counterfeit. It's then up to the brand owner to take civil action based on the information disclosed by the custom authorities. So the risk to the brand owner lies in the cost of storing the goods. Jon, how does that compare to the UAE?
Jon: Thanks, Monique. So, David, the UAE doesn't have a Federal customs recordal system. The custom matters are dealt with at the Emirate level of which there is certain. But the good news is 5 of those 7 Emirates do offer custom recordals to registered UAE trademarks. These are handled independently of one another, so customs recordals will be required for each relevant trademark registration, and the recordal will last for the life of that registration. So it needs to be renewed when you renew the underlying trademark. In terms of recent developments in customs here in the UAE, there's been a recent press article relating to seizures through 2019, which showed an increase in seizures through air cargo. So roughly a third of all seizures last year were carried out at the airports rather than seaports. So this could point to counterfeiters looking to use different routes to market perhaps, or perhaps to the increase in ecommerce leading to smaller shipments being sent out by directly to consumers, rather than larger sea based consignments. But I think it is a useful reminder of covering all possible options and engaging with the officials at all possible entry or exit points to a country. I think the other thing I would say is look at onshore recordal possibilities.
So in the UAE the onshore administrate for enforcing Dubai does allow brand owners to record registered rights on their system. This in turn allows their inspectors, when they're in the marketplace, to look out for and monitor for potential infringements or counterfeits in the market. So it would be very useful to have that onshore recordal alongside any customs recordals you put in place. So enough on the UAE. Maria, I understand that customs recordals are available and important tool in Russia as well. Perhaps you can run through customs recordals in Russia in more detail with David.
Maria: Thank you, Jon. Customs recordal is one of the key mechanism for detection counterfeit goods imported into Russia. The suspected counterfeit goods, marked with a trademark recorded with customs, can be suspended for 10 days with a possible extension for 2 additional days. If the goods prove to be counterfeit the custom authorities initiate an administrative investigation or transfer the case to the police for criminal prosecution. As a result of such investigation customs police file a claim with court and, provided that the court confirms the counterfeit nature of the goods, they are confiscated and further destroyed. Post-release actions are also available, if the alleged counterfeit goods have been initially released for some reason, customs can run post-release investigation.
Russia has customs mobile groups and they are one more effective tool for post-release control. In 2015 the Russian government formed a special customs department specialized in preventing import of sanctioned goods and food stuff. These are the customs mobile groups. It turned out that this mobile groups are also helpful in detecting illegal products such as drugs and counterfeit products. The customs mobile groups located near the Russian border with Kazakhstan and Kyrgyzstan appear to be the most productive due to the volume of traffic from China passing through this region.
Monique: Great. Thanks, Maria. So, David, as you've heard customs recordals can be useful, both from an enforcement perspective and in yielding intelligence on counterfeiting patents. The EU recordal that Kate mentioned, for example, covers all the EU member States. Well, 27 remaining ones, in addition to France and Spain where you've seen counterfeits. So such a recordal may reveal counterfeiting activity in Romania or Croatia, for example. Strategic recordals in countries such as India, South Africa and Mauritius can also colour the picture further.
If you are going to go to the trouble and expense of putting recordals in place, you can improve their effectiveness by a customs or law enforcement training, where this is permitted. Interceptions are more likely if customs feels that the rights holder is genuinely interesting in enforcing in the jurisdiction. Also, distributing token items such as pens and post-it notes bearing the trademarks following training, serves as a useful way of keeping a brand top of mind. Maria, you've been coordinating customs training in Russia for a number of clients for some time. What are your thoughts in training there?
Maria: Thank you, Tania. Training is certainly a good idea for Russia. Customs recordal becomes more efficient if the rights holder attends customs or policing trainings. The trainings are a good opportunity to achieve a number of goals. To discuss brand protection issues with a customs or police officials in person. This is very important. To increase awareness of the brand owners intellectual property portfolio. To educate the customs and police about authentic goods, and characteristics of counterfeits, and to stimulate enforcement authorities to be more attentive in respect of the particular brand during the customs border control.
David: Well, training makes sense to me and it sounds like Russia has a pretty sophisticated system going there so I'm pretty comfortable with that and I'm just wondering about training in China and the UAE. Is it possible to do it there as well?
Ivy: Yes, David. Definitely. The customs training is available here. Our team often arranges customs trainings or attends training activities organized by the customs or brand protection associations. The pace of on site customs training has been slowed down due to the pandemic this year, however, as things are getting back to normal in China here we understand from certain customs that they're planning to restart their training schedules on site. This said, we may try to approach some specific customs which Hellranger may be concerned and seek their prior consent for arranging a customs training. Jon, how's the situation there in the UAE?
Jon: Thank you, Ivy. So, yes, customs training does take place here as well. So customs and other enforcement bodies in the UAE look to set up formal training sessions with rights holders. For example, Dubai customs will set up sessions through a year, usually based around sectors such as automotive, personal care, etcetera. For those sessions not only will Dubai customs officials be in attendance, but often they will invite enforcement officials from other bodies in the UAE, and also from other countries in the region. So it's a good opportunity to get your message across. The sessions are normally 15 to 20 minutes and are carried out in Arabic. The rights holder can run through its business and provide assistance and pointers to customs to help identify suspect shipments. So it's a real great opportunity to bring your brand to life for the officials which in turn helps them with their engagement in taking action for the business.
David: These custom trainings, they sound like a really good idea and I'm just wondering, especially because of budget concerns, is that something that we can do ourselves in the company?
Monique: Absolutely, David. Hellranger can certainly do the training. Indeed, customs is very happy when the rights holder, itself, shows up. If language capability, Jon mentioned Arabic training for example, or travel budgets prevent this then your local law firm or a well trained local investigator could deliver the training for you, relying on a slide deck that Hellranger has prepared. With the pandemic customs authorities in some jurisdictions have made provision for online training too which means your reach goes that much further. So, still on the topic of engaging with third parties in your enforcement efforts, Hellranger may also consider working with IP focused professional organizations, two of whom are the International AntiCounterfeiting Coalition, the IACC, and INTA. Monique, could you explain to David a little bit more about these organizations?
Monique: Tania, of course. These professional organizations can offer additional enforcement options. For example, IACC has the roadblock program, which in partnership with credit card companies and financial services companies offers a streamlined route to barring counterfeiters from being able to accept online payments from consumers. And INTA works tirelessly, on behalf of brand owners, to promote stronger anti-counterfeiting measures including a simplified customs procedure here in Canada as well as other very interesting initiatives around the world.
David: Thanks, Monique. Of course I'm a member of INTA already and I'll look at the anti-counterfeiting practice there to learn more about it as well as the other committees. Listen, this has been really, really helpful and I've only got about five or 10 minutes left and then I'm going to meet my CEO. So, can you do me a favour and just summarize for me my country. The main points that I should takeaway and just give me a little bit of an action plan and then I think we're all set.
Maria: David, we will start with our takeaways per jurisdiction. Starting with Russia, trade protection, for instance, where the expedited trademark prosecution procedure and customs recordal in the countries of the customs Union, such as Russia, Kazakhstan, Belarus, Armenia, Kyrgyzstan are worth considering as a first step. It is worthwhile to supplement the customs recordal by training sessions with the local enforcement authorities. Active work on the internal market and comprehensive online enforcement activities are recommended to be considered at the second stage.
Kate: Hi. Well, when you're talking about the UK and the EU there's no single solution, David, to these issues. You've got to create the right approach from the tools available to you, so I would encourage you to take on board all the things you've heard from everybody today and think about what is going to work for your company, most effectively. One point that I'd just like to emphasize is a point actually that Monique put out there all about the online infringements. So the blocking payment tools are really, really useful. And they go to the heart actually, of one of the things that is very effective on an anti-counterfeiting program, and that is making yourself a really difficult target. Make yourself the most unattractive target for a counterfeiter. If you start to take action to stop them getting their money you'll soon become an extremely unattractive proposition to them.
David: Thanks, Kate.
Ivy: Yes, David, from China as always file your rights early. China adopts the first to file system of patents and trademark. We suggest Hellranger to file or register the IP rights as early as possible. In China the 3-D copyright claims are challenging and usually have to be asserted under the handle 'works of applied arts'. Therefore we strongly recommend Hellranger to apply for the application of the design patent early so as to have a robust course of action against any infringers in the market. Jon?
Jon: Thank you, Ivy. David, I echo everything that's been said so far by my colleagues. The first thing I would add though is engagement. I think taking time and effort to engage with the officials, whether it's through training or meetings, and particularly meeting them when you don't need them to do anything can go a long way to help lay the groundwork so that as and when you need them to act they will be success for you. Also taking swift and decisive action is important. Particularly where it's the officials that reported these matters to you. What we've heard in the past is frustration where there've been times where they have proactively reported matters to brand owners, or representatives, and it's been weeks or months, if at all, before they hear anything back and before any steps were taken. So by ensuring swift and decisive action can be taken, even if that's to say thanks but no thanks, it helps to maintain their interest and ensure that they continue looking after your brand for you.
The last thing from me is keep your brand in plain sight. So for training, or for raids, provide them with branded certificates or branded letters of appreciation because they are often kept on their desks or on their office walls so it will keep your brand front of mind. Monique, what would be your takeaways from Canada for David, please?
Monique: Thanks, Jon. To all of the above I would add be proactive. Be sure to own all of the copyright in your logos, in your ad copy, in your photographs so that you can harness the potential of copyright in the online setting and elsewhere. Make the lives of counterfeiters more difficult, as Kate said, and they will choose an easier target. You will over time build a reputation as a brand that takes action and this can deter the bad actors looking for an easy profit. Maria, over to you to summarize the action plan.
Maria: Thank you, Monique. So to summarize the action plan, first program preparedness. Evaluate Hellranger's intellectual property rights protection and plan for product assessments including introducing counterfeit indicators. Second, determine the scope of your program. Third, consider the type of investigation support you will need, both bricks and mortar and online. Fourth make provision for online enforcement and, finally, third party collaborations. Partner with customs, law enforcement and industry associations.
Monique: Thank you, Maria. So, David, in closing my two takeaways are one, being nimble in your approach. Monitor the market for emerging trends and patents and adjust your scope and focus accordingly. The program you start with isn't necessarily going to be the program you continue with. And, two, to get the most of your budget ensure you understand the relative effectiveness of the available enforcement options in the countries you're covering and vary your approach accordingly. Thanks for your time and let's speak again after your meeting.
David: Thanks, Tania, and thanks everybody. I've got what I need and I appreciate your help.
And, thank you, to everyone who's tuned in to us today and is still with us. We really appreciate you listening to our webinar and, incidentally, we will be hosting future webinars on anti-counterfeiting in 2021. So if there's anything you would like to hear about just let one of us know and we'll add it to our list. Now, we have a couple of minutes left if there are any questions at all, please feel free to post the questions in the Q&A section at the bottom of the screen and we'd be happy to address them. Thanks again for tuning in. See you.
Monique: Right. So we have one question which I'll read out. So how would this apply for a service offered online internationally when no goods cross the border? Monique, I know you've had some experience with enforcement regarding services in particular, would you like to maybe comment to start?
Maria: Sure, Tania, sure. I'm not sure exactly what type of service the question is about but to the extent that there's an online presence you can look at different ways of removing that online presence. Taking down the website. Taking down the content and often, as I've said earlier, copyright is your weapon of choice. You can also use trademark registrations but you can rely on IP that you have. The online's actually very interesting because it's not so jurisdiction focused. You do have to think about where servers are located and how you want to approach the takedown. The aim would be to take it down online, and so there are various strategies that you can deploy to remove an online presence, and a lot of it will depend on where the servers located and what kind of IP you can assert. I hope that's helpful. Also, if it's an app that would be a different situation where you can go through the App Store or Google Play. Again, relying on copyright or perhaps trademark registrations. So the online world is actually a very interesting enforcement reality at the moment. There are many options and they depend really on the specific facts of the case. I hope that's helpful.
Monique: Thanks, Monique. I think to add to that, even if you're only selling your products in North America, the interesting thing with the online is that the chances of an enforcement are so much greater globally. So you really need to be able to have a sense of what's happening all over the world and that requires good online investigation support. We have another question which is, would one use Chinese authorities to takedown a service in China selling into the US? Ivy, maybe you could take this question? Should I repeat it just in case you didn't catch it?
Ivy: Yeah, I'm reading this. Sorry, I didn't see the question.
Monique: The question is, could one use Chinese authorities to takedown a service in China selling into the US? An online service.
Ivy: I think it depends on what kind of service we're using instead of online service. We can use the online platforms, as mentioned by Monique, instead of those Chinese authorities I think. I think this question should be more specific in order I can better understand how to answer this.
Monique: Is the question, is the server located in China and they're selling goods into the US? Is that the question?
Ivy: Is that a service or product? A service?
Monique: That's not specified in the question as yet.
Monique: Can I add something to this, Tania?
Monique: Yeah, please do.
Monique: I had a situation where we had an online, a website hosted by a US server. We did a DMCA takedown request. The website was removed and they moved to a server in China and started selling through their same website but now hosted by a Chinese server. We just thought we have nothing to lose so we repeated the takedown request to the host in China and they disabled the online presence. Which was interesting and I can't say that would happen in every case but it happened in this case. Which was very encouraging and basically solved it. It was a very straightforward way to solve what was otherwise a very difficult problem. I'm not saying this would happen in every case but it was very useful in that case.
Ivy: Yes, so generally speaking, if the IP right is robust enough I think we still stand a chance to ask the Chinese authorities or those e-platforms to remove those infringing activities. So that's the general response. So we need some specific scenario, of course, so that's generally speaking.
Monique: Great. Thanks, Ivy and Monique.
David: Alright. Thank you very much, everyone, for attending. Thank you to our panelists. Enjoy your day and see you next time.