The Use of Trademarks on the internet: Addressing the issue of on-line counterfeiting within the EU. WIPO, Geneva, September 17, Jean Bergevin. Head of Unit “Fight against counterfeiting and piracy”. DG Internal Market and Services. European Commission.

Overview. 1.The problem. 2.The solution: enhance "due diligence". 3.The MoU against on-line sales of counterfeit products. 4.Looking forward.

The problem. Internet is a marvellous tool to reduce market entry barriers within the EU. However, illicit or fraudulent traders can also use it to rapidly offer counterfeit products directly to consumers. Relevant EU acquis consists of e-commerce directive (2000/31/EC) and IPRED (2004/48/EC). Intra-EU effective cross-border civil enforcement is still in its infancy even if counterfeiting is primarily a cross-border activity.

The solution. Do not alter the existing liability/safe harbour regime found in the E-Commerce directive. Instead, encourage due diligence throughout the supply chain and information sharing between rights-holders and intermediaries.

The response: Structured dialogues and MoUs. On the basis of the harmonised legal basis of IPRED, the Commission has sought to encourage agreements between intermediaries and rights-holders to fight against counterfeiting. Cooperation is better than litigation. MoU of 4 May 2011 against sale of counterfeit goods on the internet is the first pilot. Involves internet sales platforms and brands.

Signatories (meet on quarterly basis) –4 Internet Platforms –14 companies –15 trade associations Scope –Non-original physical goods manufactured without consent of the rights owner which infringe IPR, pursuant to applicable Member State or EU law Topics covered –General principles –Notice and Take-Down procedures –Pro-active and Preventive measures –Cooperation and information sharing –Consumer confidence –Repeat infringers MoU to fight Online Sale of Counterfeits

Future steps. Evaluation report of the MoU later this year. Considering launching similar dialogues to achieve MoUs between rights-holders and: – (i) advertisers – (ii) payment service providers. Interested in developing these MoUs at international level.

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