Insights Counterfeiting and enforcing IP rights: Commission publishes Recommendation

The European Commission has adopted a Recommendation to combat counterfeiting and enhance the enforcement of intellectual property rights. The Recommendation builds on work previously conducted by the Commission to improve IP enforcement and prevent counterfeit goods entering the market, including the adoption of the Digital Services Act and the establishment of a toolbox against counterfeiting under the 2020 Intellectual Property Action Plan.

According to the Commission, the Recommendation “provides EU stakeholders and Member States with a toolbox to strengthen the EU’s capacity to protect the single marker from counterfeiting and piracy”. It focuses on five key areas:

  1. More effective cooperation

The Recommendation states that all stakeholders should designate a single point of contact for all IP-enforcement matters. It calls upon social media, transport and logistics, payment, and domain name service providers to work together to prevent the misuse of their services, and encourages signatories to the Memorandum of Understanding on the sale of counterfeit goods on the internet to seek “trusted flagger status” under the Digital Services Act so that they are given priority when submitting notices of illegal content.

  1. Stronger IP enforcement

Member States are encouraged to assess and increase sanctions for serious IP crimes as well as ensure that appropriate compensation is paid for damages (both material and moral) suffered as a result of infringement. They are also encouraged to adapt procedures to respond to new illegal practices, such as using dynamic injunctions to address so-called ‘mirror websites’. The Recommendation also calls for the use of alternative dispute resolution for all IP disputes, including those related to domain names, and promotes the faster, cheaper, and cleaner storage and disposal of counterfeit products.

  1. Futureproof IP protection

The Commission recommends increasing the use of AI systems to trace and detect counterfeit goods, in addition to adapting practices to protect IP in virtual worlds.

  1. Raising IP awareness

Member States are encouraged to integrate education about IP rules into national training curricula for police, customs officials and public prosecutors, whilst at the same time generally raising the awareness of IP rules among the public. Also included is a recommendation that Member States encourage EU businesses to have regard to available information on the state of IP protection and enforcement in non-EU countries.

  1. IP protection tools for SMEs

According to the Commission, SMEs are particularly vulnerable to counterfeiting activities. Therefore, there are measures specifically tailored for these businesses, including a new IP Scan Enforcement Voucher for SMEs to cover the costs of expert advice on enforcing their IP rights, a new Cybertheft Prevention Toolkit for SMEs, and the development of a checklist with guidance on how SMEs can use AI without compromising their intangible assets.

Thierry Breton, Commissioner for the Internal Market commented, “effective tools against counterfeiting are essential for the protection of intellectual property, consumer safety and innovation. With the Digital Services Act, we are keeping online platforms accountable for playing their part in tackling counterfeit goods. Today’s recommendation contains a range of additional tools to combat counterfeiting, supporting the competitiveness of SMEs and businesses across Europe.” To read more, click here.