COMBATING COUNTERFEITS ON THE GLOBAL FRONT:
BEST PRACTICES
Elisabeth Bradley, Bristol-Myers Squibb Company Aslam Mohamed, RNA IP Attorneys, India
Philip Yu, DuPont China Moderator: Monica Riva Talley, Sterne, Kessler, Goldstein & Fox, PLLC
I P O A N N U A L M E E T I N G N E W Y O R K
INTRODUCTION
Ø Counterfeiting Defined:
§ Imitation products, with or without brand name.
§ Grey market, diversion.
§ Use of brands to attract clicks/sales.
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Ø Overview of Panel
§ Elisabeth Bradley, Bristol-Myers Squibb Company
§ Aslam Mohamed, RNA IP Attorneys, India
§ Philip Yu, DuPont China
§ Moderator: Monica Riva Talley, Sterne, Kessler, Goldstein & Fox, PLLC
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INTRODUCTION
Ø Goals of session:
§ Share best practices.
§ Explore jurisdictional differences, enforcement options.
§ Help companies initiate, or enhance, anti-counterfeiting efforts.
§ Tips and takeaways.
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INTRODUCTION
BRISTOL-MYERS SQUIBB’S PROGRAM
Ø Targeted online program; partner with vendor.
Ø Modules: Websites, Marketplaces, Social media.
Ø 74% compliance rate overall.
Ø Remainder: Corp Security involvement; authorities.
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ENFORCEMENT EXAMPLE – WEBSITE MODULE
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Corporate Security - BMS Internal
• First Detect Date: 05/12/2016 • First Enforced Date: 05/12/2016 • Compliant Date: 05/26/2016 • Page offered Daklinza for sale, along
with contact information
• Facebook removed the entire page due to enforcement efforts
• h#ps://www.facebook.com/profile.php?id=923342401118296
ENFORCEMENT EXAMPLE – SOCIAL MEDIA
DUPONT
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Ø Much of the global counterfeiting could be traced back to just a few countries.
Ø Multi-pronged enforcement in China.
Ø Cross-border collaboration.
Ø Driven by the Business Units as the stakeholders.
DUPONT – MULTI-PRONGED ENFORCEMENT
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Ø “Boots-on-the-Ground”– track down illegal manufacturers, formulators and traders, by collaborating with local police (PSB) and other administrative agencies (AIC).
Ø Regulatory agencies – agricultural, health & safety, quality, consumer protection etc.
Ø Customs – recordation and training at various customs sites.
Ø Online – monitor e-commerce en mass.
Ø Legal/IP team, BP team of the Business, Corp Security + external PI firms.
DUPONT ENFORCEMENT EXAMPLES – POLICE
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DUPONT ENFORCEMENT EXAMPLES– CUSTOMS
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DUPONT EXAMPLES– ADMIN ACTION
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RNA IP ATTORNEYS
§ Global Retail eMarketer 24 trillion
§ Internet eMarketer 1.6 trillion
§ ICC BASCAP Fake Market 1.7 trillion
§ SIPRI World Military Spend 1.6 trillion
§ India GDP 2.2 trillion
§ 2.5 million legitimate jobs at risk each year.
§ China World Leader in Fakes.
§ India hub for fake medicines (Washington Post). 13
RNA IP ATTORNEYS
Ø Physical Markets
§ Auto Parts.
§ Drugs.
§ Movies & Music.
§ Electronic & Software.
§ Books.
§ Apparel & Footwear.
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RNA IP ATTORNEYS
Ø Online Markets
§ Legal Fakes : Jack Ma “Same Quality Different Brand”.
§ Drugs: Of 8,000 websites most offer counterfeits (NABP).
§ Small Pack Deliveries : Evades enforcement.
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RNA IP ATTORNEYS
Ø Indian counterfeit drug market:
§ Largest manufacturer of generic drugs globally.
§ 2nd largest exporter of OTC and Prescription to US.
§ 3rd largest pharmaceutical drug producer by volume.
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RNA IP ATTORNEYS
Ø WHO finds 1 in 5 drugs made in India are fakes. In New Delhi pharmacies 12 percent of sampled drugs were spurious. Main Issues:
§ Safety lapses.
§ Falsified drug test results.
§ Generic versions of Accutane, Neurontin and Cipro faked.
§ GNC, Target, Walgreens and Wal-Mart received fake herbals.
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criminal action
complaint before Magistrate u/s 156(3) direct through police, DCP, ACP
directions to investigate search & seizure warrants issued
follow up with police and TMO for Sec. 115 approval
Raids Arrest FIR
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Ø Despite the stalemate on OCR 2015, India:
§ established the High Level Working Group on Intellectual Property under the auspices of the United States-India Trade Policy Forum.
§ embarked on a thorough review of its IPR regime to produce a National IPR Policy.
The National IPR Policy was adopted in May 2016.
COUNTERFEIT COMBAT– INDIAN POLICY INITIATIVES
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PACKING COUNTERFEITS COLLECTING MATERIALS
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PACKING COUNTERFEITS READY TO GO
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MANUFACTURING COUNTERFEITS COLLECTING THE OIL
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MANUFACTURING COUNTERFEITS FILLING ORIGINAL CANS
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STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
Ø Brand protection across industries.
Ø Some current projects– multimedia products, musical instruments, medical implants.
Ø Enforcement – online, boots-on-the-ground, law enforcement, litigation, ITC.
Ø Business solutions – brand protection strategies, consumer education, retailer solutions, certification programs.
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STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
MAKING THE CASE
Ø Investigate the risk; how serious is it?
Ø Gather data and articulate risk.
Ø Getting funding.
Ø Get to the root.
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MANAGING BRAND PROTECTION PROGRAMS
Ø Where does it sit within your company?
Ø Who manages?
Ø How do you work internally? Cross-functional?
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LEVERAGING BRAND PROTECTION PROGRAMS
Ø Use of technology.
Ø External partners.
Ø Working with Law Enforcement.
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PRIORITIZING EFFORTS
Ø Managing volume.
Ø Strain on resources.
Ø Assess program goals.
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TAKEAWAYS
Ø Cross-functional coordination critical.
Ø Building good external relationships also critical.
Ø Consider partnering among your industry.
Ø Dedicate proper resources; prepare for long fight.
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MEASURING SUCCESS
Ø Set appropriate program goals.
Ø Demonstrate ROI.
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….IS IT THE END?
RESULTS ….
THANK YOU!
Contact Info
§ Elisabeth Bradley, [email protected], +1 (609) 252-4457
§ Aslam Mohamed, [email protected] +91 (44) 42147426
§ Philip K. Yu [email protected], +86 (21) 3862-2776
§ Monica Riva Talley, [email protected], +1 (202) 772-8688
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QUESTIONS? DISCUSSION?
