Practice detention storage and destruction of ip infringing products

Framework to Reduce IP Infringements in Europe:Presentation of an EU Funded Twinning Project to Develop a Comprehensive System for the Serbian Market Inspectorate:

Practice: Detention, Storage and Destruction of IP Infringing Products

Enforcement Working Group Meeting 3 March 2016Michael Poulsen, DKPTO

Gavin Terry, Chartered Trading Standards Institute Francesco Loro, Waste Management Expert

Erling Vestergaard, Observatory

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Detention, Storage and Destruction of IPR Infringing Products

IntroductionMichael Poulsen, DKPTOHead of Department International Project Department at the DKPTO. Eleven years of experience from a national IP office in the field of international cooperation. Team Leader on three extensive EU funded projects in EU pre-accession countries (Poland, Croatia and Serbia) all targeting issues related to IP protection and enforcement.

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IntroductionGavin Terry, Chartered Trading Standards Institute Gavin is a fully qualified Trading Standards Officer with over 25 years experience of IPR Enforcement. He holds a Postgraduate Diploma in IP Law and an Interpol IP Crime Investigators Certificate. From 2005–2009 Gavin was seconded to the UK IPO as a special policy advisor on IP enforcement and contributed to the original development of the UK IP Crime Strategy and the establishment of the UK IP Crime Group. Gavin continues to sit on the UK IP Crime Group. In 2009 he was presented with an ACG (Anti-Counterfeiting Group) Lifetime Achievement Award for Excellence in Anti-counterfeiting Enforcement.

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IntroductionFrancesco Loro, Environmental ExpertWaste Management Expert at Environmental protection agency of Veneto. Francesco was a member of the technical secretariat of the Italian Ministry of the Environment for the development of the Italian Law on Waste Derived Fuel and hazardous waste classification and management. He also worked as an expert on industrial waste management in EU fundet projects in the Balkans and Baltic Area. Thanks to more than ten years of work in waste sector he has gained an in depth knowledge of EU waste and environmental legislation.

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Background• Twinning project ”Enforcement of Intellectual Property

Rights”• 1.300.000 €• 24 month duration, February 2014 – February 2016• Pre-assession measure aimed at preparing Serbia for

EU membership• Main beneficiary was the Market Inspectorate of Serbia

(MI)

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Results• New MI procedures for detaining, storing and destroying

counterfeited products and development of case handling system

• Formalized platform for cooperation between the institutions working with IPR protection and enforcement

• EU acquis alignment of substantive IPR legislation with and drafting of relevant administrative legislation

• Analysis of the IP infringement situation in Serbia• Training of 800 officials from the enforcement authorities• Awareness raising material and event implementation

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New MI Procedures• A procedure, to formalise the prioritisation process

already undertaken by managers in the inspectorate, to rank requests for action in order of importance – similar procedures for prioritising other aspects of the Inspectorates work.

• A general IPR Enforcement process covering all aspects of an IPR control from initial request to completion.

• A procedure and time frame for the destruction of infringing goods, based on best practise and the legal framework proposed in the Law on Special Powers, currently under discussion.

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New MI Procedures• Guidelines on how to handle dangerous counterfeited

goods• Administratrive regulation on detention, storing and

permanent removal from the channels of commerce of goods that are suspected of infringing intellectual property rights.

• The concept of voluntary surrender forms and evidence bags introduced in the MI

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What we found• MI active in IP Enforcement• Large quantities of IP Infringing goods in storage• Other seized goods in storage• Legal process slow – MI & RHs• Infringing goods held in store for years• Deterioration• No voluntary forfeiture process – ‘Fast track’

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Recommandations• Procedure for seizing &

handling IPR Infringing goods• Process control • Integrity• Continuity• Provenance• To accepted ‘best practice’

legal standards• Fast track procedure

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Organisation ?

Or chaos ?

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Recommandations for Control Procedures• Securely seal evidence on site• If possible sort counterfeit goods at time of seizure

Sort by:• Trade Mark or Brand• Type of product• Style• Batch

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Training seminars for Market Inspectors Day 1:• Introduction to IP Rights• Legal framework• Practical scenarios• Risk based prioritisation model• Ex officio action• Voluntary surrender & forfeiture• Demand reduction strategies

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What we found: Hazardous goods

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Key issue:• When do counterfeit products or goods become

waste?

Our finding: • Counterfeit goods have intrinsic value, derived from

IP, until the goods are destroyed or debranded.• Goods that are waiting for the verdict of the court

cannot be considered wasteUpon destruction counterfeit goods become waste and NOT before.

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Some important rules on waste management

Waste Management in Europe Union is based on:• European Directive 2008/98/CE• Decision 2000/532/CE• Directive 1967/548/CE DPD• Directive 1999/45/CE DSD• Regulation(CE) 1272/20008

CLP and related ATP• Regulation (CE) 440/2008

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What is waste?• Waste Management in Europe Union is

based on The Waste Framework Directive (EU Dir. 98/2008/CE) that defines a waste as: ”any substance or object which the holder discards or intends or is required to discard”

• There aren’t references to economic value: in some case a gold bar or a crude oil barrel could be considered as waste…

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Classification of waste

Hazardous

Municipal waste

Based on composition

Based on production site

Non hazardous

Mirror entries

Industrial waste

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The European Waste Code (EWC)

• The EU Decision 2000/532/CE

• It is important to use the same name for the same kind of waste

• There is specific law that describes how to assign a specific waste code on the basis of the production process

• Three couples of number that describe the production process

20.01.01 - PAPER

20.01.11 TEXTILE


The current situation in Serbia

• Unsorted urban waste collection• Lack of plant able to recovery

the materials• Absence of plant for the

treatment of hazardous waste• The largest part of the waste are

dumped in landfills


The shredder machines

• 6 shredders installed– 2 in each site– 1 machine for bulky goods– 1 machine for small goods

• The machines are industial grade shredder that are usually used for waste treatment

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Is it possible to increase the social awareness on IPR?

• Some person can think that the destruction of some goods is a wastefulness

• Is it possible to «use» the counterfeited good instead of destroy it?

• It is necessary at least to debrand the goods

• It is necessary an agreement with the producer

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Which goods are possible to treat?• CD/DVD • SMALL TEXTILES• FOOTWEARS• DISHES/CERAMIC• SMALL Electric and

Electronic Equipment• BOOKS and LABEL• MAKE UP & PARFUMES• EMPTY BOTTLES

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Which goods can I treat?

• CEMENT• LIGHTERS (FULL)• CAR BATTERIES• INDUSTRIAL VALVES and

IRON/ALUMINIUM PROFILES

• BOTTLES (FULL)• SPRAY BOTTLES (in

pressure)• FLAMMABLE LIQUIDS• EXPLOSIVES

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A working plan for counterfeited goods based on separate collection

To recover the material it is necessary to sort the counterfeited good on the basis of their composition

Treatment as separated batchs

Paper goods

Plastic goods

Textile goods

Recovery process

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What is necessary to treat in a separate process?

All the goods that could contaminate the environment and can be hazardous for the workers

• DUSTY MATERIALS• SMALL BATTERIES• SOAP and DETERGENTS

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End of good status and waste status


If we apply the definition of waste,

means that it is necessary to apply also the other rules

related to waste.

Based on the EU regulation a landfill is:

«waste disposal site for the deposit of the waste …,

including a permanent site (i.e. more than one year)

which is used for temporary storage of waste…

The warehouse could be considerd as non-authorized dumping site for hazardous

waste

What would it happened if we had considered those IP goods as waste before the destruction?

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Warehouse organisation

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From this…..

To that…..

CP5. StakeholdersStaff training• Guidelines & Procedures for

handling hazardous waste• At Irig & Belgrade stores• Formal training• Theory• Definitions & Regulations• Practical hands on training• Lead by experts• Positive feedback from

participants


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Legal Alignment

Step 1: Draft Alignment of Substantive Laws to Civil IPR Enforcement Direct 48/2004

Step 3:Draft Consolidated Law

Step 4:Draft Executive Order Connecting Consolidated Draft Law to Procedures and Guidelines

Step 2:Draft MI IPR-enforcement law

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Framework to Reduce IP Infringements in Europe• Coherent system for detention, storage and

destruction (legislation-executive order-guidelines-training-practice)

• Effective cooperation with intermediaries: public utility companies et al

• Preventing recirculation of infringing products from e.g. utility companies into the supply chain while utilizing limited government resources more effectively

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The Future• Are the achievements sustainable?• Will legislative framework ever be passed?

• Can the basic model be an inspiration to EU MS struggling with storage and destruction issues?

Thank You

(+ 34) 965 139 100 (switchboard)

(+ 34) 965 139 400 (e-business technical incidents)

(+ 34) 965 131 344 (main fax)

[email protected]

[email protected]

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www.oami.europa.eu

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Practice detention storage and destruction of ip infringing products