Fighting counterfeits through Customs registration of IP rights

Counterfeiting represents an ever increasing percentage of world trade and is likely to continue being a major problem facing IP rights owners in the coming years. Education of the general public that counterfeiting is not victimless and causes significant damage will still be offset by consumer demand for 'branded' (counterfeit) products.

In some countries it is possible to record trade marks and other IP rights with the Customs Authorities. This can be an effective step to catch counterfeits. It is also inexpensive and the costs involved can contribute towards financing increased IP training of border personnel. 

Registering with Customs can be useful in developed economies such as the European Union and United States, in particular, to help prevent the importation of counterfeit products. If you are only in possession of a national right in an EU member state then your Customs recordal application can be limited to a 'National Intellectual Property Rights Application' as opposed to a 'Community Intellectual Property Rights Application'.

China represents a manufacturing hub for counterfeit products and usefully the Chinese Customs authorities examine not just imports but exports too. A recordal of an IP right at Customs will enable them to detain a potentially infringing shipment coming into the country but also such a shipment leaving China.

It is also possible to register IP rights in other key jurisdictions such as India, Mexico (since January 2012), Taiwan and Turkey and many more. I have been advised that Brazil is looking to introduce similar provisions.

There are a couple of quirks to watch out for if you are looking to register your trade marks/IP rights with Customs authorities globally (where it is possible). Jordan is slightly unaligned with their trade mark regime as customs registration must be made with the central Jordanian authorities but also separately with the Aqaba Special Economic Zone Authority (ASEZA) to cover the whole country. Aqaba is Jordan's only seaport.

When it comes to the United Arab Emirates, the Customs authorities are not managed federally (unlike the Trade Marks Office) but remain under the responsibility of the seven emirates. Of these seven, Dubai, Ras al-Khaimah and Sharjah have implemented a registration of IP rights service. Sharjah is often regarded as an extension of Dubai these days. Ras al-Khaimah (or RAK for short) is more remote but the UAE is not a big country.

So you may now look to register your company's or your client's trade marks and IP rights with the local Customs authorities from the United States to Albania (where there is also a recordal facility). Some countries do not provide for the possibility to record trade marks or other IP rights with their Customs authorities. However, it can be possible to make informal requests to the Customs authorities and these can result in your successful notification when infringing products enter the country.

This is just a snapshot of the possibilities but if you have any more specific requests please do not hesitate to get in touch, or liaise with your usual agents.

Republic of Kosovo is 4

This day four years ago was a Sunday. I was living in Basel, Switzerland at the time and during the afternoon I decided to walk into the city centre and, inadvertently, joined the celebrations of the Republic of Kosovo's Declaration of Independence (from Serbia). Switzerland has a large Kosovar diaspora, estimated at about 10% of all Kosovars and Basel's Marktplatz was the meeting place for a crowd of Albanian flag-waving and whistling revellers. The flag of the Republic of Kosovo (below) was yet to be formally adopted.

It's actually just over four years that Kosovo began operating its own IP regime as on 19 November 2007 it opened an IP Office in the capital, Pristina. It has good intentions but is hampered by delays and this blog will give a brief overview.

Serbia does not recognise Kosovo's Declaration of Independence and it was not recognised by all other countries either. It has not applied to join the United Nations. Any request to do so is likely to be vetoed by Serbia's ally, Russia. Not being a member of the UN prevents Kosovo from acceding to the Madrid Protocol and means Kosovo is purely a national trade mark jurisdiction; the largest by population in Europe.

The IP Office works with paper files and has suffered from power cuts and from being understaffed which has resulted in a backlog of applications. It has looked at recruiting additional employees - and Kosovo suffers from chronic unemployment - but finding the right staff and getting them trained is still not a straightforward task. At least some of the local IP firms try to actively support the Office which is commendable.

Staffing resources have meant trade mark searches are restricted to identical/near identical searches and for word marks only which is far from an ideal situation when examination and registration is taking some time. It is something that will have to be lived with for the time being, but hopefully the Office is moving in the right direction. A useful development is that accelerated examination of trade mark applications has been made available since January, although this is only available in case of alleged infringement of the trade mark.

Kosovo does have an active Customs authority and it allows for trade marks to be recorded with them. They recently destroyed a number of counterfeited products of the Slovenian soap company, Ilirija, which demonstrates positive action. OK, the cynics amongst you will suggest this is due to large amounts of pressure from the EU, but let us not be begrudging in giving Kosovar Customs some credit.

When it comes to North Kosovo, this remains under the control of Serbia although there are border controls between them administered by the United Nations Interim Administration Mission in Kosovo (UNMIK) who Serbia accepts as governing its province.

Serbian trade mark registrations should therefore provide protection in North Kosovo, including Madrid Protocol designations of Serbia.

Do note that it is possible to travel from Serbia proper to Kosovo and from North Kosovo to the Republic of Kosovo at the divided town of Kosovska Mitrovica. Whilst the Republic of Kosovo may look to assert its control over North Kosovo in the future, for the time being at least you should look to get trade mark protection in both the Republic of Kosovo and Serbia if the whole Kosovar territory needs covering. Interestingly, the Serbian (pro-EU) government recently denounced a local referendum held in the North Kosovo region which might be a sign of a softening of Serbia's stance towards Kosovo in general.