acsg newsletter issue 12-12a -...
TRANSCRIPT
Newsletter
The Importance of Trademark Registration in China
Continued on 5
132 Sites Seized • ICE, HIS, and Europol
take major action across the US and Europe.
Page 2
Action in Toronto • 11 people arrested
after more than $3 million in knock-offs seized.
Page 3
Other AC Stories • ACSG Bits & Pieces • 12 Days of Christmas • Counterfeit Crocs • Google: Copyrights • TPP Page 5
Issue 12-12A
Registering your trademark is foundational to any brand protection program. This key step is just as applicable to a new brand with growth aspirations as it is to an established brand. And when it comes to China, even if you don’t currently have your sites set on selling into the land of the dragon, or if your company only manufactures products in China for export, it is still important to register your trademark. In short, it is critical to register your trademark in China before entering into the market so as to diminish the risk of it being hijacked. It should also be noted that China uses the ‘first-to-file’ system (i.e., it doesn’t matter if you are the registered trademark owner elsewhere) and typically does not recognize unregistered trademarks.
It is often the case that a Chinese name of a foreign trademark is much easier for Chinese consumers to pronounce and/or remember. There is no set rule, the Chinese version of a foreign trademark can be a translation, a transliteration, or a distinctive Chinese mark. To be clear, IP hijacking extends to Chinese language versions of others’ marks and as such, we strongly suggest companies register a Chinese version of their Mandarin/Cantonese mark.
ACSG works with leading Hong Kong (and PRC as required) based IP law firms and can co-ordinate all trademark registration activities (Note: foreign applicants without residency or a place of business in China are required to submit trademark applications through a local agent who will deal directly with the China Trade Mark Office or ‘CTMO’). The international Classification of Goods and Services under the Nice Agreement is used for assignment of trademark protection and a separate filing is currently required for each trademark class for which an applicant desires coverage. All this said, China is a party to the Madrid Protocol, which we can advise you on, however the additional cost and expediency benefits of China specific registration should not be underestimated.
As a final note, trademark registrations are perpetual and subject to a renewal fee every 10 years.
So, what could happen if you elect to forego the recommendations detailed above? Brand hijacking…
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ACSG Newsletter Issue 12-12A
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November 26: U.S. Immigration and Customs Enforcement's (ICE) Homeland Security Investigations (HSI), and the European Police Office (Europol) seized 132 domain names today that were illegally selling counterfeit merchandise online to unsuspecting consumers.
The 132 domain names seized were part of Project Cyber Monday 3 and Project Transatlantic. These websites were set up to dupe consumers into unknowingly buying counterfeit goods as part of the holiday shopping season. The operation was coordinated by the ICE HSI-led National Intellectual Property Rights Coordination Center (IPR Center) in Washington, D.C.
This is the third year that the IPR Center has targeted websites selling counterfeit products online in conjunction with Cyber Monday. An iteration of Operation In Our Sites (IOS), Cyber Monday 3 seized 101 websites and yielded one arrest. Additionally, recognizing the global nature of Internet crime, this year the IPR Center partnered with Europol, who, through its member countries, executed coordinated seizures of foreign-based top-level domains such as .eu, .be, .dk, .fr, .ro and .uk. This effort is titled Project Transatlantic and resulted in 31 domain name seizures.
The IPR Center and Europol received leads from various trademark holders regarding the infringing websites. Those leads were disseminated to eight investigating HSI field offices in Baltimore, Buffalo, Denver, El Paso, Newark, San Antonio, San Diego and Ventura (Calif.) and to the investigating Europol member countries including Belgium, Denmark, France, Romania and the United Kingdom.
The domain names seized are now in the custody of the governments
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involved in these operations. Visitors typing those domain names into their Web browsers will now find a banner that notifies them of the seizure and educates them about the federal crime of willful copyright infringement.
In addition to the domain name seizures, officials identified PayPal accounts utilized by the infringing websites. Proceeds received through the identified PayPal accounts, in excess of $175,000, are currently being targeted for seizure by the investigating HSI field offices.
"We couldn't be more pleased with the opportunity to work closely with HSI to shut down criminals targeting our customers and our brand just as the holiday season takes off," said Tod Cohen, vice president and deputy general counsel of Government Relations for eBay Inc.
During this operation, federal law enforcement officers made undercover purchases of a host of products; including professional sports jerseys, DVD sets, and a variety of clothing, jewelry and luxury goods from online retailers who were suspected of selling counterfeit products. If the copyright holders confirmed that the purchased products were counterfeit or otherwise illegal, seizure orders for the domain names of the websites that sold these goods were obtained from federal magistrate judges.
The IPR Center is one of the U.S. government's key weapons in the fight against counterfeiting and piracy. Working in close coordination with the Department of Justice Task Force on Intellectual Property, the IPR Center uses the expertise of its 21 member agencies to share information, develop initiatives, coordinate enforcement actions, and conduct investigations related to IP theft.
Source: www.ice.gov
132 Counterfeit Online Sites Seized in US/Europe Cyber Monday Blitz
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ACSG Newsletter Issue 12-12A
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More Than $3 million Worth Of Counterfeit Goods Seized in Toronto s
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December 5: A joint investigation involving eight law enforcement agencies as well as private sector groups and companies has resulted in the arrest of 11 people and the seizure of more than $3 million in knock-off goods.
Detective Robert Whalen of 55 Division’s Major Crime Unit and Detective Constable Andrea Chedes gave members of the media a tour of the seized goods Monday morning.
Some of the most notable knock-offs include money, identification, electronics, prescription drugs, cosmetics, DVDs, software and toys as well as the usual luxury handbags, footwear and clothing.
“It is one of the largest seizures in the Toronto Police Service’s (TPS) history,” Staff Inspector Bryce Evans of the Financial Crimes Unit said of Project Consumer Safety, which targeted businesses in Toronto, and Peel and York regions allegedly selling counterfeit goods that posed potential hazards to the public, including children.
Police executed several search warrants Thursday, November 29 at a number of locations throughout the Greater Toronto Area (GTA).
Evans said during the Christmas season, especially, there is a significant increase in knock-offs sold in retail stores and online, adding often the general public is unaware the items they’ve purchased are fake and could be harmful to their health and safety.
“The fact is that counterfeit products available today are much more diverse and range from luxury items like designer clothing, handbags, health and beauty products, medication, children’s toys, cigarette, cigars, auto parts and electronic goods,” he said, adding the majority of these unregulated goods come in direct contact with consumers’ skin, hair, facial area, eyes and are also
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being ingested.
Police are especially concerned as those who produce counterfeit goods invest zero dollars in research and development and do not comply with any safety regulations or standards.
Evans said tests have found a down jacket to contain bacteria, mildew and chicken parts as well as dog fur used as the trim around the hood.
Some dyes used in children’s toys have also been found to contain traces of urine.
“Keep in mind all counterfeit goods are dangerous,” Insp. Todd Gilmore, the officer in charge of the RCMP’s Toronto North Detachment and the GTA Federal Enforcement Section, adding the public is safer because of the seizure.
He also pointed to the ongoing negative impacts on legitimate Canadian businesses and jobs as a result of the sale of counterfeit goods, the majority of which come from China. Profits from counterfeiting have also been linked to organized criminal and terrorist activities, Gilmore said.
The 11 accused, who are facing a total of 47 charges, have a January 17 court date.
We’ll aim to expand this section in future issues but as a brief summary - it’s been a busy couple of week…
Brad had the pleasure of attending a welcome reception on December 3rd for the Canadian negotiating team in Auckland for the 10-day Trans Pacific Partnership multi-lateral meetings - and then spent a week in Hong Kong and Guangzhou with Steve meeting with ACSG ‘brain-trust’ associates/partners, conducting wholesale market surveys/investigations, and engaged in a lengthily and excellent best practices discussion with the IP guru for one the biggest luxury brands on the planet!
ACSG Bits & Pieces
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December 7: If you're planning to give the gift of plastic ventilated shoes to your loved ones this season, you better make sure they're the real deal—apparently, there's big business in hawking counterfeit Crocs. Who knew? According to a report in WWD, the feds just sentenced 18 counterfeiters to 46+ years in prison for selling 128,752 knockoff pairs of Crocs, which equals about $9.6 million worth of fake footwear.
And to anyone who's ever had the idea of concocting their own faux clog—beware. The big wigs at the shoe brand have some words for you: “If you attempt to produce or sell infringing Crocs products, we are going to find you and take definitive action to protect our intellectual property,” said Dan Hart, chief legal and administrative officer for Crocs. “The lengthy prison terms and heavy fines handed down in these cases show that Chinese authorities are very serious about assisting us to eradicate the production of counterfeit Crocs products in China, and so are we." Just remember, the little chomper guy on the logo should look genuine:
Source: www.stylebistro.com
Counterfeit Crocs Are Apparently A Thing
Other Interesting Recent Headlines 1. US, Mexico Participating in Operation Holiday Hoax http://www.ice.gov/news/releases/1212/121207washingtondc.htm
2. Google: Copyright Removal Requests Spike to 2.5 Million Per Week http://thehill.com/blogs/hillicon-valley/technology/272349-google-copyright-removal-requests-spiked-to-25-million-per-week
3. How to Save Global Trade From Thieves, Pirates, and Black Market Kingpins http://www.theatlantic.com/business/archive/2012/12/how-to-save-global-trade-from-thiefs-pirates-and-black-market-kingpins/266110/
4. TPP Anything But Plain Sailing http://m.nzherald.co.nz/business/news/article.cfm?c_id=3&objectid=10851967
5. Bogus Detroit Tigers Merchandise Seized http://detroit.cbslocal.com/2012/12/05/counterfeit-detroit-tigers-merchandise-seized/#.UMHgUM2p2oo.twitter
The Global IP Center is taking the 12 Days of Christmas in a new direction! See the following links for the first four days:
1. On the first day of Christmas a counterfeiter gave to me – an airbag in minivan… (http://www.theglobalipcenter.com/blogs/first-day-holidays-counterfeiter-gave-meeee)
2. On the second day of Christmas a counterfeiter gave to me – two video games… (http://www.theglobalipcenter.com/blogs/first-day-holidays-counterfeiter-gave-meeee)
3. On the third day of Christmas a counterfeiter gave to me – three bars of soap… (http://www.theglobalipcenter.com/blogs/third-day-holidays-counterfeiter-gave-meee)
4. On the fourth day of Christmas a counterfeiter gave to me – four angry birds… (http://www.theglobalipcenter.com/blogs/fourth-day-holidays-counterfeiter-gave-meee%E2%80%A6)
Source: www.theglobalipcenter/blogs/
A Great Series by The Global IP Center
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ACSG Newsletter Issue 12-12A
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Brand Hijacking: A study was conducted by the China Anti-Counterfeiting Coalition and reported in Authentication News demonstrating how a “well-established and well-known brand” was taken over by counterfeiters (see chart below).
The chart shows that from period 1 to period 17 (covering just 32-months), the ‘brand’s’ share of the market declined slightly – but the amount of genuine
product shipped fell off dramatically! The vertical scale represents the brand market share and the difference therefore represents the amount of counterfeit product in the marketplace.
Clearly, we see shipments of primarily genuine product in Beijing during the initial periods charted but less than a year later, despite the brand remaining relatively strong, the brand had been hijacked…
The Bottom Line – brand hijacking is more than a simple theoretical concept and protection strategies are not optional.
Register Your Trademark! (con’t from page 1)
Anti-Counterfeiting Strategy Group
Australia – Canada – Hong Kong – New Zealand – USA
www.ac-strategygroup.com
USA/Canada: 727.235.6466
NZ/Australia: +64.21.520.466
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Beijing Volume Share
Actual Shipment
Finally, from all of us at ACSG…
Adapted from Counterfeiting Exposed - Hopkins, Kontnik, and