News/ IP Pro Discusses Fake Goods in Eastern Europe

Karanovic & Nikolic IP Senior Associate Relja Mirkov was recently interviewed by IP Pro on Eastern European countries that attract fake goods from Asia and how to tackle the problem.

Q: How would you describe the situation with the availability of counterfeit goods online in Eastern European countries?

Relja Mirkov: As is the general trend worldwide, customers in Eastern European countries are also prone to purchasing products online. Fake goods offered and sold online are usually to be found on local websites and pages created on social networks such as Facebook and Instagram.

However, due to a lack of local regulation of secured payment via PayPal and similar online services, in countries we are covering intellectual property matters—Albania, Bosnia and Herzegovina, Macedonia Montenegro and Serbia (Kosovo)—purchases made though international websites such as eBay were for a long time quite sporadic.

It is only recently that non-EU member countries of Eastern Europe have put into place efficient laws and regulations regarding online purchases and electronic payments that now allow customers to purchase products from websites located worldwide. As much as this is a good thing since it offers a wider variety of choice of online consumer products in general, the downside is that customers are also offered a wider variety of counterfeit goods.

Furthermore, taking into account the general economic situation in the region and weak purchasing power in the above jurisdictions, it is only logical that counterfeit goods are highly prioritised among the customers in this jurisdictions.

Q: Are strides being made to tackle the problem?

Mirkov: State authorities such as customs, market inspections and special police units take adequate steps towards tackling the problem of counterfeit goods available online, be it on domestic or international websites. Furthermore, oftentimes, in cases where high volumes of counterfeit goods are threatening to be purchased and would consequently enter state borders with the intent of being resold or just transported, state authorities of neighbouring countries work together in taking adequate steps that such goods be seized and destroyed.

On country-by-country level, many brand owners also perform their own monitoring activities of local websites and social networks, either through their legal representatives or though official state appointed authorities.

Furthermore, renowned and high-end brands tend to work together though group associations that exist on country-by-country basis and perform online monitoring activities, issue takedown notices and ultimately, seize and destroy goods in cooperation with their local legal representatives.

Q: Is there a one-strategy-fits-all-countries approach that can be employed in Eastern Europe to tackle counterfeiting online, or must brands do it country-by-country? What would you recommend?

Mirkov: There is really no unified approach in tackling this problem. Due to the fact that many Eastern European countries are still not members of the EU, the principles of free transit of goods through state boarders do not apply here, so one unified strategy would be hard to put into place.

However, in the past few years we have witnessed the creation of international brand associations that tend to be active in several countries at a time and, in cooperation with legal representatives, investigators and local chambers of commerce, work to tackle the issues of counterfeiting online.

Our advice for brand owners would be to mainly focus on country-by-country actions, as such actions provide more targeted approach and so more efficient results.

Q: What would be your top piece of advice for a brand that discovers fake goods in an Eastern European country, and why?

Mirkov: The top piece of advice for the brands that discover fake goods online being offered and sold in Eastern European countries is to, first and foremost, take adequate legal steps towards combatting further sale of such goods online. In order to do so, measures should be taken towards requesting a takedown of offers of counterfeit goods online.

From our experience, such actions oftentimes have positive results when formal requests are made through local legal representatives.

Should such a direct approach have less than desired results, the second step would be to address a formal request to the state authority appointed to deal with the protection of IP rights online. For instance, in Serbia, the authority appointed for the monitoring of counterfeit goods online is the special unit within the Ministry of Interior, which can be addressed with a request for takedown.

Please note that in non-EU member states that have either partially harmonised their local legislation with EU legislation, or are taking steps towards such harmonisation, oftentimes, counterfeit goods purchased in small quantities and for a personal and non-commercial use are not considered to be infringing any IP rights, and no measures are taken towards their seizure and destruction.

With respect to that, our additional advice would be for the brand owners to mainly focus on takedown notices as the first and most efficient tool. Should counterfeit goods be taken down from the websites, even small quantity purchases for personal use would then not be possible.

In cases of big quantity offers and purchases for further commercialisation, our advice for brand owners would be to focus on making formal requests to customs authorities for monitoring activities at state boarders, followed by seizing and destroying goods.

The full interview is available at http://www.ipprotheinternet.com/countryfocus/country.php?country_id=110#.VbX55Xkw_DC

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