INTA Comments on Countering Illicit Trade in Free Trade Zones, Attends Events in Thailand and United Arab Emirates

Published: October 15, 2018

Comments on Draft Guidance to Counter Illicit Trade

On September 3, the Anticounterfeiting Policy Project Team (Project Team) of INTA’s Anticounterfeiting Committee (ACC) submitted comments to the Organization for Economic Co-Operation and Development (OECD) on its public consultation of the Draft Guidance to Counter Illicit Trade. The Project Team, led by ACC Vice Chair Myrtha Hurtado-Rivas (Novartis International, Switzerland), Heike Bhonsle (Crocs, Inc., Germany), and María Gonzalez Gordon (Gomez-Acebo & Pombo, Spain) gathered recommendations on suggested modifications to the draft language in order to emphasize the need for stronger enforcement against counterfeit products in illicit trade and the need for unified guidelines for enforcement in free trade zones.

Although free trade zones help to improve economic growth for the host country by increasing foreign investment, employment, and innovation, they have also become increasingly vulnerable to a wide range of abuses by criminal actors due to relaxed oversight and softened controls in these areas. Particularly, many free trade zones have been used by criminal groups to transship counterfeit goods globally, either by shipping in whole counterfeit goods, or counterfeit parts for assembly in the zones. This issue is of particular importance to the Project Team and will remain a priority for the ACC.

The Project Team is a cross-regional subcommittee team that establishes the global anticounterfeiting policy positions of the ACC. The Project Team is focused on the issue of free trade zones as part of the current term’s projects.

INTA Hosts Policy Dialogue in Bangkok

On August 20, the INTA ACC-East Asia and Pacific Subcommittee held its policy dialogue with the Department of Intellectual Property (DIP) and the Royal Thai Customs at Tilleke and Gibbins’ offices in Bangkok. The event was co-organized with the Intellectual Property Association of Thailand (IPAT) and the law offices of Tilleke and Gibbins International Ltd. and was well attended by representatives from the DIP, Thai Customs, Homeland Security Investigations, as well as trademark owners, intellectual property (IP) practitioners and private IP investigators. The main objective of the dialogue was for trademark owners and other IP stakeholders to learn of the challenges others have faced when dealing with customs cases or online infringement against counterfeit products, as well as to learn of any successful solutions or activities by other participants.

Chakra Yodmani, Director of IP Promotion and Development Division of the DIP, spoke about Thailand’s recent awareness campaign on enforcement, including the 20-year Intellectual Property Roadmap published by the DIP in January 2017. The IP Roadmap specifies developments in a number of areas, including more effective enforcement by improving efficiency and coordination among public bodies and improving IP knowledge among personnel.

Satyapon Sachdecha (Satyapon & Partners, Thailand), President of IPAT, provided his welcome remarks on the first event co-organized with INTA and gave a brief description of IPAT’s goals and objectives. Mr. Sachdecha said that much progress has been made by the Thai government in fully backing IP as one of the keys to the country’s economic growth and its recognition that the protection of IP rights (IPR) holders fosters and promotes foreign investment in Thailand.

Brian Law (Eversheds Harry Elias LLP, Singapore), INTA ACC-East Asia Pacific Subcommittee chair, provided his opening remarks and latest updates on the activities and main goals of the ACC, including regional activities in Asia-Pacific.

Chonusa Vichien, Customs Technical Officer, Professional Level, Investigation and Suppression Bureau, The Customs Department, presented on the challenges and successes of Thai Customs with respect to seizures in 2017 and the first half of 2018, and also provided an introduction to the Thai Customs Department structure and its powers under the Customs Act. B.E. 2560 (2017).

The Intellectual Property Rights Coordination Center (IPR Center) operates under the Investigation and Suppression Bureau of Customs, Division III, and has the mission of developing customs strategies, plans, projects, research or other academic works related to IPRs. The IPR Center coordinates with domestic and international government agencies and the private sector, and provides IP information to customs officers.

Thai Customs shared the following three main challenges that have an impact on their operations:

  1. Brand owners are not proactive enough with respect to small consignments or in remote areas of the country;
  2. Trademarks are often not registered with the DIP in Thailand; and
  3. There is often an absence of representatives in Thailand, a change of representative without informing Customs, or granting of power of attorney only for trademark registration, not for trademark protection.

Wiramrudee Mokkhavesa (Tilleke & Gibbins, Thailand), a member of IPAT and INTA’s ACC, presented on the topic of strategies to minimize challenges and succeed in cross-border enforcement. She focused on the DIP’s customs recordation procedure and pointed out that, while some cases involving trademarks and copyright have been successful, there is still no enforcement through customs recordal for patent-infringing goods.

Ms. Mokkhavesa’s presentation detailed the first transit case to be successful in Thailand, in February 2018, by the Investigation and Suppression Department of the Eastern Part of Thailand at Laemchabang Customs Port. The case concerned a shipment originating from China transiting through Thailand with a final destination of Laos, where more than 100,000 items of infringing goods were found, including clothes, spare parts, and luxury goods. She concluded by highlighting the advantages of the Customs Watch List for ex-officio actions and for gathering better intelligence.

Eric McLoughlin, Regional Attaché-Thailand, Homeland Security Investigations at the Embassy of the United States in Thailand, presented on the importance of cooperation and how this could help coordination in cases of seizure of infringing goods and international investigations.

The second part of the policy dialogue focused on best practices in combating online counterfeiting from the perspective of INTA and IP practitioners.

Kowit Somwaiya (LawPlus Ltd., Thailand) INTA Board member and Vice President of IPAT, presented on the initiatives of INTA’s ACC in relation to tackling the issues and on the best practice document developed and updated by INTA, including recommendations for all key players involved in the online space.

Alec Wheatley, IP Consultant (Tilleke & Gibbins, Thailand), shared statistics on infringement cases filed with the Intellectual Property and International Trade Court in Thailand in recent years, showing an increase in online trademark infringement cases. Thailand is attempting to address these challenges by updating its laws to reflect current economic realities. The recently enacted Computer Crime Act 2017 provides a blocking method for Internet service providers (ISPs) and access to IP-infringing content online. IP owners may provide the URL (uniform resource locator) of the suspect content to the Ministry of Digital Economy and Society (MDES) for further action. Moreover, the New Thai Copyright Act amendment provides for a notice-and-takedown scheme; however, working with hosting platforms to remove counterfeit items still remains crucial.

Speakers and attendees engaged in discussion on the details of the case as well as best practices to overcome common challenges and to support information sharing among brand owners, IP practitioners, and enforcement authorities.

INTA in Twelfth International Law Enforcement IP Crime Conference

On September 25 and 26, INTA was proud to sponsor and participate in the 12th International Law Enforcement Intellectual Property Crime Conference. The conference was co-hosted by INTERPOL (the International Criminal Police Organization) and the Dubai Police and took place at the Grand Hyatt Hotel in Dubai, United Arab Emirates. Virginia Cervieri (Cervieri Monsuarez & Associates, Uruguay), INTA ACC chair, and INTA Senior Coordinator, Anticounterfeiting, Tiffany Pho, served as INTA delegates at the meeting.

The conference theme for this year focused on “Combating the Global Crime Wave of Illicit Trade” and featured a mix of plenary and panel sessions, with opportunities for attendees to break out into operational workshops focused on different enforcement topics.

Ms. Pho spoke on a panel titled “Combating Online Threats and Making the Internet Safer for Consumers,” moderated by Liam Gimon (INTERPOL), with Angus Lee (Australian Federal Police), George Salama (Twitter, Int.), and Maher Esmat (ICANN) as panelists. Ms. Pho spoke about the recent activities of the ACC and what the committee is doing to combat online counterfeiting. In particular, Ms. Pho spoke about the completion of the guide Addressing the Sale of Counterfeits on the Internet and how a collaborative effort of stakeholders is important in curbing online counterfeiting. A critical piece of the stakeholder group are the consumers. Ms. Pho spoke about how educating consumers is a necessary part of anticounterfeiting enforcement and emphasized the work of the Unreal Campaign in educating teenagers ages 14‒18 on the value of trademarks and the harms of counterfeit products.

The Association was able to coordinate several meetings during the conference with Dubai Police, Dubai Customs, the Emirates Intellectual Property Association, and the Brand Owner’s Protection Group to discuss anticounterfeiting priorities in the region.

For more information on the customs trainings or on INTA’s anticounterfeiting activities, please contact INTA Anticounterfeiting Manager, Maysa Razavi, at [email protected]; Anticounterfeiting, Senior Coordinator, Tiffany Pho, at [email protected]; or Valentina Salmoiraghi, Anticounterfeiting Advisor, Asia-Pacific, at [email protected], who recently joined INTA’s Asia-Pacific Representative Office in Singapore.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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