202012.18

France and the European Union: Blanchet and Bournazel report on the evaluation of the fight against counterfeiting

A little over a year after the report of the French Court of Audit on counterfeiting (iptwins.com, 2020-03-10), Christophe Blanchet and Pierre-Yves Bournazel (delegates at the French National Assembly) delivered a report of prime importance on the evaluation of the fight against counterfeiting (Christophe Blanchet et Pierre-Yves Bournazel, Rapport d’information sur l’évaluation de la lutte contre la contrefaçon, Assemblée nationale, 9 décembre 2020, No. 3650). The report contains 18 significant proposals.


The following translation is not official


PROPOSALS

I – CHANGING THE LOOK AT COUNTERFEITING AND DEFINING A NATIONAL STRATEGY TO BETTER COORDINATE PUBLIC AND PRIVATE ACTORS

Proposal No. 1: to authorize customs to practice buying tests for drugs and raw materials for pharmaceutical use. 

Proposal No. 2: to encourage mayors to study and act on the basis of their experience with the local police’s action with regard to the street sales and build closer collaboration with the national police services. 

Proposal No. 3: to inform consumers about the negative impact of counterfeits at various critical points in education or economic life: school, college, high school, national service, purchases on websites or social networks.

Proposal No. 4: to adopt a national strategy and an action plan to combat counterfeiting and instruct an inter-ministerial delegate to ensure its implementation.

Proposal No. 5: to instruct the National Institute of Industrial Property (Institut National de la Propriété Industrielle) to collect all the data useful for quantifying counterfeiting and listing administrations’ action.

II – REVISING THE LEGISLATIVE FRAMEWORK AND STRENGTHENING THE JUDICIAL RESPONSE

Proposal No. 6: to establish an administrative procedure for warning or blocking websites offering counterfeit products for sale.

Proposal No. 7: to authorize sworn trademark agents to transcribe an infringement committed on the Internet and request, on behalf of the right holder, that the display and sale of counterfeit be put to an end on commercial platforms or social networks.

Proposal No. 8: to improve the efficiency of blocking sites selling counterfeit products:

– by introducing a provision in the French intellectual property code allowing the judicial authority to declare the group suspension of multiple domain names and social network accounts and the consolidation of complaints against the most active sites;

– by creating a legal provision specifying that the complainant will not need to demonstrate a link or a connection between the various sites for which the blocking is requested, considering that they are de facto linked by the common infringement they cause to the trademark; reducing the formality of proof to admit screenshots and certificates from a sworn trademark lawyer; authorizing the injunction by a judge to remove content identical or equivalent to content that has already been considered illegal;

– by providing for a provision expressly specifying that in cases where it is impossible to know the owner of the website, the injunction is directed to the intermediary service provider;

– by providing for the terms of a transfer of ownership of the suspended domain name to the right holder to prevent its reappearance;

– by establishing a consumer warning obligation on the websites suspended for counterfeiting or illegal sale mentioning the conviction.

Proposal No. 9: to evaluate the decisions rendered by the courts in matters of counterfeiting, paying particular attention to the analysis of damages and the award of costs.

Proposal No. 10: to establish in the French intellectual property code a civil fine against the counterfeit seller, proportionate to the seriousness of the fault committed, to the weatlth of the counterfeiter, and to the profits he made.

Proposal No. 11: to facilitate the defense of the intellectual property rights of companies:

– by creating an organization in the legal form of a public interest group or an association to advise and provide assistance to right holders, in particular, SMEs;

– by authorizing an existing association to take legal action or by creating such association, based on the association for the fight against audiovisual piracy (ALPA);

– by studying the extension of the scope of the class action to include counterfeiting matters.

Proposal No. 12: to better fight against illicit tobacco sales:

– by applying Article 29 of Law No. 2018-898 on the fight against fraud, which requires social networks to state that the sale of tobacco is illegal;

– by taking stock of the flat-rate fine sanctioning the hasty purchase of tobacco and studying the possibility of sanctioning the possession of illicit tobacco such as that of narcotics;

– by making social networks aware of their obligation to remove illegal ads without interference from the right holder, in the same way they cooperate to remove hateful content.

Proposal No. 13: to adapt the judicial organization to changes in international online commerce:

– by dedicating a jurisdictional chamber in certain large high courts to disputes relating to e-commerce;

– by allowing right holders to file their requests online;

– to limit the change of magistrates specializing in intellectual property and disputes relating to e-commerce.

III – THE EUROPEAN UNION MUST DEFEND ITS CREATORS AND MANUFACTURERS AND PROTECT ITS CONSUMERS

Proposal No. 14: to integrate counterfeiting into the European Union’s political roadmap, prioritizing the fight against counterfeiting within the missions of the European Anti-Fraud Office (OLAF) and Europol.

Proposal No. 15: to recognize the liability of electronic commerce platforms and social networks in the event of the sale of counterfeit products and impose a duty of vigilance on them, based in particular on:

– an obligation to remove the goods from the site within a maximum period of time after receipt of a reasoned notification from a right holder;

– an obligation of transparency on the means implemented to fight against the sale of counterfeits;

– an obligation to cooperate with their administrative authorities for requests for information;

– an obligation to require the identity of professional sellers;

– an obligation to reimburse the customer who is mistaken about the quality of the goods;

– an obligation to inform consumers when they have been exposed to counterfeit products.

Proposal No. 16: to include the protection of intellectual property rights in all bilateral trade agreements signed by the European Union.

Proposition No. 17: to regulate the online sale of drugs more effectively:

– by strengthening the obligations of domain name registrars with regard to drug sales sites;

– by imposing proactive measures on e-commerce platforms to withdraw falsified medicines on sale;

– by providing an obligation for social networks to set up filters for offers or incentives to sell medicines.

Proposal No. 18: to provide for periodic publications on falsifications of medicines within the European Union.


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