The broad term "product piracy" comprises plagiarism, counterfeits and bootleg of products and works for which a person possesses rights to an invention or method, a design right or a copyright. The right proprietor is not only impaired by image loss, but also via the exploitation of development work enabled by his significant financial investment as well as impaired in his product turnover and profit. It is estimated that the original manufacturers suffer an annual loss of billions of Euros worldwide due to product piracy.
However, not only the original manufacturers, but also third parties are affected by the consequences of product piracy. Due to the high financial loss in the affected companies, a large number of jobs have been cut. In addition, there are often significant health risks hidden for the consumers in the counterfeited products (such as medicine or electronic equipments).
Trademark piracy relates to the special cases wherein products which are protected by trademark law are counterfeited. Trademark and product piracy are by no means trivial offenses, but rather categorized as economic crime. In Germany, trademark and product piracy may be punished with imprisonment of up to five years in individual cases.
A comprehensive IP portfolio which protects the most important products of a company by different IP rights is a very important measure against product piracy. Close collaboration between the original manufacturer and customs can further facilitate the detection of counterfeited products.
We provide counsel to companies which are affected by trademark and product piracy. We may assist you in actively proceeding against product piracy with warnings and preliminary injunctions as well as via boarder seizures or product destruction with the assistance of custom authorities.
You were given a written warning claiming that you imported or offered counterfeited products?
Such a warning, which is very often supported by trademark or design rights, should be considered serious. We are more than happy to advise you of legal possibilities in order to fend off the claims and to keep the costs as low as possible for you.
An effective instrument to combat trademark and product piracy is to engage customs and, thus, prevent counterfeited products from being imported into and offered in the European Union.
Exceptions might be made by customs if the counterfeited products were found in the travelling bag of a passenger and were only intended for private use. The value of those goods, however, should not exceed the customs-exemption limit. There is only a very fine line between acting for private purposes only and the assumption that somebody has an intention to use imported goods for business. Once that line is crossed, it is hard to prove wrong the assumption of acting commercially.
Products from foreign exhibitors at a fair can be confiscated by customs if an application for customs seizurewas submitted with the competent customs office beforehand. The procedure of seizure by customs authorities can be especially recommendable if the proprietor of an Intellectual Property right acquires knowledge of a foreign company intending to import plagiarized goods into Germany at an early stage. The products concerned may then already be confiscated by customs when they are first imported into the territory of the European Union; thus, the infringing goods may be barred from reaching the fair/exhibition at all.
Beschwerde gegen Beschlagnahmen / Sicherstellungen
Da den Zöllnern oder Polizisten nur vergleichsweise wenig Zeit bleibt zu entscheiden, ob sie gegen bestimmte Waren vorgehen oder nicht, kommt es durchaus auch vor, dass Produkte vom Messestand entfernt werden, die tatsächlich nicht in den Schutzbereich des vorgebrachten Schutzrechts fallen. Eine gründliche Überprüfung dieses Schutzrechts ist durch den Standinhaber aufgrund des Zeitdrucks und nichtvorhandener Übersetzungen von deutschsprachigen Schutzrechten oft nicht möglich. Wenn Sie das Gefühl haben, dass Produkte zu Unrecht von Ihrem Messestand entfernt wurden, können Sie uns gerne kontaktieren. Wir überprüfen den Schutzumfang des jeweiligen Schutzrechts und ob die beschlagnahmten Produkte wirklich in den Schutzbereich dieses Schutzrechts fallen. Gegebenenfalls unterstützen wir Sie bei der Beschwerde gegen die Beschlagnahme.
Confiscation At the Fair
Alternatively, the infringing products from countries outside the EU can be removed from the fair booths by custom authorities. Customs’ mobile investigation units act on behalf of the District Attorney’s Office and the putative plagiarized products will be seized as proof for further criminal proceedings. For the proprietor of a patent, trademark or any other IP right, measures like these pose an effective possibility to proceed against product piracy. Besides customs or when customs is not responsible in individual cases, for example, when the infringing products originate from another member state of the EU instead of a third country, the corresponding demand for prosecution may also be filed with the competent police authorities.
A very active example for the combat against product piracy is Messe Frankfurt. Especially in exhibitions such as Ambiente, Tendence or Paperworld, the world’s leading fair for paper, office supplies and stationery products for private and business use, in which there is usually a high number of plagiarized products to be expected, customs work closely with Messe Frankfurt to organize tours of custom officials and proprietors of IP rights during which potentially infringing goods are examined and, if necessary, removed from the booth.
Appeal Against Seizure
Since custom officers or policemen only have little time to decide whether they should proceed against certain products, it can very well happen that products are removed from the fair booths which do not fall under the scope of protection of the asserted IP right. Also, a thorough review of the IP right on the side of the exhibitor is often not possible due to time pressure and lack of a translation of the German version of the asserted IP right.If you feel like your products have been wrongly removed from your fair booth, you are very welcome to contact us. We will review the scope of protection of the relevant IP right and determine whether your seized products really fall under the scope of protection of that right. If necessary, we will support you in appealing against the customs seizure.