Fight Against Piracy and Counterfeiting in Developing Countries

Fight Against Piracy and Counterfeiting in Developing Countries and LDCs: Progresses and challenges National Strategies Maha Bakhiet Zaki (Phd) Director, Intellectual Property & Competitiveness Department Economic Sector League of Arab States maha. bakheet@las. int Cairo

§ Arab countries have paid early attention to combating commercial fraud and protecting intellectual property rights, to the extent that some of such countries have contributed to the international efforts aiming at the protection of intellectual property and ratified a number of international agreements since nineteenth century, which was, of course, within the colonial era. § Arab governments have always been exerting tremendous efforts to fight piracy, counterfeiting and commercial fraud. However, one of the most important governmental policies is developing the legal framework for combating piracy and counterfeiting. one will find that almost all Arab countries have laws concerning intellectual property and trademark protection. § It is well-known that the primary function of trademarks is to indicate the source products. Nevertheless, with economic and industrial progress, this function has developed. So trademarks do not only indicate the product source but also became a symbol of product quality and marketing. Thus counterfeiting trademarks impedes the trademark’s performance of its functions and harms the consumer.

§ It is noteworthy that most of these laws listed a group of acts in which trademarks are used for counterfeiting purposes. These acts are deemed a crime for which the punishment is imprisonment and fines, where court’s right to confiscate the devices and machines used particularly for the counterfeiting process is preserved. Moreover, these laws provides for the right to claim damages or civil remedy. In all these cases the infringed trademark shall be registered in the country concerned. Hence, protection is conditioned by registration. § We do know that social and economic losses caused by commercial fraud and counterfeiting, e. g. unemployment and loss of income tax returns, are concerns that haunt governments in all countries. Therefore, international cooperation remains essential for ensuring the implementation of appropriate border measures. § Combating piracy and counterfeiting obliges stakeholders to follow multi-directional methodology or policy since the continuation of cross-border movement of counterfeit and fake goods without any constraints or real counter-actions is un acceptable Consumers’ protection, health and safety are superior to any other considerations.

§ It is noteworthy that most of these laws contain a comprehensive list of acts in which trademarks are used for counterfeiting purposes. These acts are deemed a crime for which the punishment is imprisonment and fines, with court’s right to confiscate the devices and machines used particularly for the counterfeiting process is preserved. Moreover, these laws provides for the right to claim damages or civil remedy. In all these cases the infringed trademark shall be registered in the country concerned. Hence, protection is conditioned by registration. § We do know that social and economic losses caused by commercial fraud and counterfeiting, e. g. unemployment and loss of income tax returns, are concerns that haunt governments in all countries. Therefore, international cooperation remains essential for ensuring the implementation of appropriate border measures. § Combating piracy and counterfeiting obliges stakeholders to follow multi-directional methodology or policy since the continuation of cross-border movement of counterfeit and fake goods without any constraints or real counter-actions is unacceptable. Consumers’ protection, health and safety are superior to any other considerations.

§During the last ten years, Arab countries have exerted huge efforts in developing trademark legislations within the framework of WTO Arab Member States’ compliance with their commitments under the Agreement on Trade related Aspects of Intellectual Property Rights (TRIPs). § Regarding Arab countries’ situation vis-à-vis international agreements, most of Arab countries are members in the most IP conventions, namely Paris Convention for the Protection of Industrial Property. § However, the conventions concluded before TRIPs Agreement have neglected the enforcement issue and sufficed by setting substantive rules for ensuring protection at the international level since a long time, without developing the rules and provisions that guarantee the enforcement of the texts of such conventions in state parties.

§ The characteristic with which TRIPs agreement is distinctive from other international conventions pertaining to several intellectual property domains lies in its great interest in the enforcement of IPRs. TRIPs has also been concerned with setting substantive rules for providing a minimum level of intellectual property rights in different member states. It has also paid due attention to setting decisive procedural rules to guarantee the implementation of the protection standards provided for therein. § Customs have played a distinctive role in the enforcement of the provisions on IPR protection in custom outlets. Customs used to clear products carrying registered trademarks if the importer is a person other than the trademark right holder based on the approval of trademark registration competent authority in the respective country. However, following the provisions of Articles 51 -60 in TRIPs Agreement, the current custom procedures are, different from the past applicable procedures. § Generally, TRIPs Agreement has addressed the enforcement of intellectual property rights in Section III thereof, namely in Articles (41 -61). These articles set forth the general commitments (Article 41), administrative and civil penalties and procedures (Articles 51 -60) Border measures, and criminal procedures (Article 61

§TRIPs provided for a new role of customs, which, in turn, made customs authorities a genuine partner in combating commercial fraud, e. g. Article 69 of TRIPs stipulates that “Members agree to cooperate with each other with a view to eliminating international trade in goods infringing intellectual property rights. For this purpose, they shall establish and notify contact points in their administrations and be ready to exchange information on trade in infringing goods. They shall, in particular, promote the exchange of information and cooperation between customs authorities with regard to trade in counterfeit trademark goods and pirated copyright goods. ” § Some Arab countries has been committed to the provisions of Article 69 of TRIPs and issued resolutions on establishing contact points. These countries include Egypt where a Ministerial Decree has been issued in 1997 concerning the establishment of an IPR-protection contact point to be the link between WTO and the Egyptian bodies responsible for the enforcement of IP conventions and to assist customs authorities vis-à-vis border measures.

§ Many Arab countries have developed their legal systems and clearly defined the role of customs authorities, and custom procedures to be taken upon suspension of custom clearance as well as judicial procedures after custom clearance suspension. Most customs administrations in Arab countries cooperate with Regional Intelligence Liaison Offices, World customs Organization (WCO /RILO) in Riyadh and cooperate with other countries regarding the exchange of information related to commercial fraud in order to take custom procedures needed for seizing trademark infringing goods. § A number of customs administrations in Arab countries have established units to combat commercial fraud and to protect intellectual property, which in itself represents a development in the fight against piracy and counterfeiting, as well as an addition to relevant governmental efforts (e. g. Bahrain, Jordan, Sudan, Egypt).

LAS Efforts

An overview of Intellectual Property & Competitiveness Department MOU between LAS and WIPO, July 2000 §LAS Council Resolution No. 9071, dated 12 th of March 2001. §LAS SG Resolution No. 89/1 on 4/4/2012 concerning the establishment of the Intellectual Property & Competitiveness Department within the organizational structure of the Economic Affairs Sector. §Intellectual property &Competitiveness Department has participated in a number of activities on “ Custom efforts for combating counterfeiting and Fraud and IPR protection, in addition to holding various proceedings, including: §The regional Arab Conference on National Custom Efforts for Combating Counterfeiting and Fraud and IPR Protection”, co-organized by LAS IP Department and the IP Office in U. S. Embassy in Cairo in LAS premises on 27 -28 April 2010.

The most important recommendations of this conference are: §The IP Dept. and Customs Dept. in the league of Arab states are called to utilize LAS information network concerning intellectual property management in order to facilitate the exchange of information in the infringement of intellectual property. §Customs authorities shall necessarily utilize of the information registered in trademark offices in Arab states in distinguishing between genuine and counterfeit products. §Customs authorities in Arab countries shall necessarily practice more competences vis-à-vis free zones and trans-border goods to halt smuggling and movement of fake and counterfeit goods. §Establishing IP units in custom administrations to combat commercial fraud and to connect such units with IP offices in Arab countries. § The Third Arab Forum on Anti – Commercial Fraud. Counterfeiting And Intellectual Property Rights Protection- Saudi Arabia- March 2013.

§ Bahrain Customs’ Seminar on Intellectual Property and Combating Piracy. § The seventh meeting of the Technical Committee for enacting Arab guidance Act on the Protection of Intellectual Property Rights, held in Beirut on 8 -10 January 2013, has recommended the following. § Pursuant to the Council of Arab Ministers Resolution No. 911, issued by its 27 th session held in Cairo on February 2012, in relation to incorporating a full chapter on border measures within text of the Arab Guidance Act on the Protection of Intellectual Property Rights , based on the output of the 7 th meeting of the Technical Committee. Chapter 8 in the Draft Act (Articles 153 -157) provided for “Border Measures for the Protection of Intellectual Property Rights. ”

§ Assigning the director of the Intellectual Property & Competition Department (Head of Committee), to prepare an explanatory memorandum on the draft Arab Guidance Act on the Protection of Intellectual Property Rights, and the Final Provisions and to have it circulated to the LAS member states to express their views, proposals and remarks (if any) and forwarding such feedback to LAS to be then referred to the Committee for consideration at the committee’s next year meeting.

In conclusion, Regional Efforts can be summarized in the following: § Legal or legislative framework. § Accession to international conventions and working with relevant international organizations and bodies concerned. § Establishing database involving all agencies concerned with combating piracy, counterfeiting and commercial fraud; § Providing human and financial capacities to effectuate the regulatory role in the field of combating counterfeiting and commercial fraud; § Intensifying training programs for counterfeit goods control officers; § Educational programs and media campaigns to raise awareness of the importance of the fight against counterfeiting and commercial fraud. § Cooperation and coordination among concerned departments within the same country, such General Custom Administration, Industrial Property Department and Consumer Protection Administration; § Full cooperation and coordination with the Private sector and civil society organizations;

Thank You For more information: maha. bakheet@las. int www. arabip. org