INSIGHTS

Counterfeiting damages the brand image and decreases its sales volumes considerably. Besides being an immoral act, counterfeiting is major global industry that develops with technology evolution and increases during the periods of recession. Counterfeiting starts at a small scale, which complicates the detection of the production and the apprehension of the offenders. The battle against the latter criminal act gets tougher in times of crises, as counterfeiters take advantage of the consumers’ low income and the political turmoil to introduce their fraudulent products.

Opportunistic offenders capitalized the widespread of COVID-19 through growing their production volume. On one hand, counterfeiters preyed on the consumers’ fears regarding the revenue shortage and offered more fake goods at a reduced price. E-commerce, on the other hand, grew exponentially due to the global pandemic, which put a huge strain on supply chains, causing a shortage of basic items. The size of this problem kept on staggering, leading to a reduced alertness of shoppers and e-commerce platforms to the suppliers’ identity.

The medical division is affected exceptionally by the counterfeiting upsurge. Because of the nature of the current global pandemic, the world is suffering from a shortage of medical equipment. The bad actors opportunistically are selling fake hand sanitizers, face masks and different pharmaceuticals. This illegal act could gravely impact the health and well-being of consumers and front-line responders.

According to International Trademark Association (INTA), a case opened on March 19 by the European Anti-Fraud Office (OLAF) regarding the imports of fake medical supplies in views of the COVID-19.

The world Customs Organization confirmed the presence of similar acts, including the seizure of fake COVID-19 tests. Europol reported, in the same occasion, the high demand for certain types of healthcare and sanitary products, which enhanced online and offline counterfeit marketing.

In order to have more insight on this alarming situation in Middle East, North Africa, and Turkey, we conducted an interview with our Baianat intellectual property experts from several countries.

As per our internal statistics in the legal department in Baianat, many counterfeiting cases have been recorded lately during these tough times and in different regions of the MENA that is mainly linked to the global sanitary crisis counterfeit products started to gush in the shadow of the COVID-19 pandemic.  Our market investigation mainly pointed out products that were of a big concern to the consumers at this time such as detergents, hand sanitizers, masks, medical gloves.  The spotted mockups are from different companies, yet they all use the same colors and misleading similar names such as,” Vettol” “Clean’t All” of famous multinational and international entities.  To have an insight about the situation and the remedies possible in some of the regions, our lawyers are addressing some of the main questions that are raised up:

1- What are the procedures available to the client during the lockdown and emergency state?

• Turkey

With reference to our Turkey branch, all the legal periods have been suspended until the 15^th of June following the Law N°.7226 on the Amendment of certain laws that was published in the Official Gazette on the 26^th of March 2020. Nevertheless, it is up to the present time possible to file a lawsuit, submit a criminal complaint and to request a preliminary injunction. We should bear in mind that due to the ongoing circumstances; hearing sessions are postponed as limited office workers are available.

• UAE

The municipalities in some emirates and Economic Departments have seized non confirm masks as well as hand sanitizers. The action is based on random movement of the authorities due to the lockdown in many emirates.

The procedures available during the lockdown in UAE are the following:

* At the Department of Economic Development level:

The DED in Dubai are working normally from long distance, as the following procedures shall take place:

– Complaints are to be submitted and paid online

– The DED will forward the matter to the complaints committee to review and approve the same.

– Once the complaint is approved the DED inspectors will conduct a raid upon the accused (if the shop is open the inspectors will seize the counterfeit products if any, otherwise if the shop is closed then the matter will remain pending till the shops re-open.)

* At the customs departments level:

The customs are usually monitoring the imparted products in case of any violation the concerned customs department shall seize the products and contact us to take actions according the suggested procedures at the time. Further, the reporting of violation by our side shall be online at Dubai and Abu Dhabi (other emirates are working normally)

* At Police Intellectual Property department level:

The case can be presented online or via depositing the complaint at the concerned police station, and the police will take over the matter.

• Jordan

The procedures in this period are carried only on the Customs and Criminal Investigation Department (CID) level. The Institution for Standards and Metrology (JSMO), on the other side, limited the complains to masks, gloves and sterilizers.

• Egypt

Sending a Cease and Desist letter through the court’s bailiff against the infringers is a first step remedy.  After which we recommend filing a criminal complaint before the Commercial Fraud Bureau (CFB). Subsequently, Customs recordal and complaints are filed through customs authorities or competent courts/seizing counterfeit shipment.

• Morocco

Concerning, in the Moroccan territory, a court bailiff’s statement is the only available course that will serve later on to file an action once the court resumes.  However, exception is made for medical equipment and commodities where authorities take immediate actions once the complaint is filed with the Customs or the Police.

2- Do the Customs or other Government entities in your country act as usual? Is there a possibility to file a complaint?

• Turkey

In Turkey, customs and governmental institutions are operational either remotely or following a shifting system. Thus, the filing of application to the customs or any administrative institution may be executed. Yet, the complaints may not be scrutinized due to the existing operations suspension.

• Saudi Arabia

Concerning the Kingdom of Saudi Arabia, t the customs are operational and that only relevant complaints are taken into consideration.

• Jordan

For the Criminal investigations in Jordan, Procedures are followed as usual regarding prosecuting complains, seizure, arrests, confiscations, and investigations.

The Jordanian customs assigned an alternate agent who will oversee seizing suspicious samples. Trademark agents will be contacted as usual by phone in the customs centers that will be, therefore, operating as usual. We have to inform the customs in a brief deadline of the status of the products seized, whether they are counterfeit goods or not. The necessary actions will be taken then as usual regarding releasing the original goods and confiscating the counterfeit.

• Egypt

Regarding Egyptian governmental entities, once the case is referred to the court, the customer can proceed and take all the necessary legal actions. Therefore, these measures will result in the seizure of counterfeited shipments (Intellectual Property enforcement actions). Nevertheless, a delay in scheduling the hearing sessions should be envisioned ascribable to the current situation.

3- In case the Law stipulates that after the preventive seizure of the Customs, we need to file with the Courts within 10 days more or less. Now that the Courts are closed, what are the options of our clients?

• Turkey

Concerning Turkey, they pursue the Law N°. 7226 on the amendment of certain laws which states that all legal period regarding the origination, exercise or abolishment of a right including the right to litigation, right to commence enforcement proceedings, application to courts, periods of complaint, objection, warning, notification, submission, limitation periods, lapse of time and mandatory administrative application periods, periods for mediation and conciliation have been suspended from 13^th of March until 15^th of June.

As stated in the Article 107/1 of the Customs Regulation, it is compulsory to file a lawsuit in the competent court and take an interim injunction decision. It is also possible to take an interim injunction decision from a court other than the competent court and to file a lawsuit before the competent court in less than 10 days from the date of the interim injunction decision. Then, the document representing the situation should be submitted to the customs administration. In fact, the legal nature of the 10 day-period is a prescription period or limitation period. Hence, in accordance with law N°. 7226, this time span should be suspended until the end of the lockdown.

Moreover, the interdependent actions to the provisional injunctions, regulated under the law on Civil Procedure, are unswervingly omitted from the scope of Law N° 2776. Consequently, any legal deadline about the actions complementary to provisional injunctions will continue to proceed under usual conditions. In this respect, if a right owner has already acquired an interim injunction decision, a right owner should file a law suit before the competent court within 10 days from the date of the interim injunction decision and submit the document indicating this situation to the customs administration.

• UAE

Court cases in UAE are filed online however, the hearings may know some delay due to the adjournment they had until resumption of work.

• Egypt

A provisional decision from the competent court is required in order to seize the counterfeit shipment. In addition, administrative actions are still available to proceed with before the competent courts in Egypt.

• Morocco

According to our Moroccan legal department, the situation is quite different in the kingdom of Morocco. Indeed, all the legal deadlines have been suspended due to the current emergency state.

4- How can we protect our clients’ rights during the lockdown period, knowing that the ministries and courts are either closed or working at low capacity?

• Turkey

The Turkish government has legislated Law N°.7226 which prevents the loss of rights by allowing the suspension of periods until the 15^th of June. However, in order to smoothen the workflow, the procedures that are suitable to be implemented through online platforms, will be proceeded accordingly.

• UAE 

The ministries and the authorities (the IP protection departments) in UAE are functioning normally from long distance. In case of any violation our branch in Dubai contacts the concerned authority and acts accordingly. Further, for the courts all the hearings beside the urgent injunctions were adjourned until resumption of work. However, the new cases filing is available either online or via deposit depending on the emirate.

• Jordan

All legal measures can be taken against any infringing party in Jordan by the Custom Department and CID, and it should be referred to the Court as soon as the Courts return to work, while the submitting complaints by JSMO are online and within narrow limits including complaints only for masks , gloves and sterilizers. The complains department at the Institution for Standards and Metrology (JSMO) are following their work from home with a possibility to file electronic complains; the procedures, however, will be relatively slow due to the difficult movement impacting the act of checking the goods and samples.

• Egypt

The governmental establishments which are administering the IP enforcement actions are currently fully operational, namely Commercial Fraud Bureau or Customs authorities. The latter entities are competent in anti-smuggling counterfeit shipments through the Egyptian ports. In contrast, regarding the prosecution-related matters,

Counterfeiting scams did not appear with the COVID-19, yet this crisis has given them more prominence. In addition to destroying the brands and businesses, counterfeit products circulation is proved to endanger considerably global safety and health. Now more than any other time, Trademarks protection is paramount for clients of BAIANAT Intellectual Property, we pledge our complete support to fighting counterfeit.

 

Written by : Mses. Rim Toumi & Fatine Cherkaoui