ELZABURU Blog - Industrial and Intellectual Property

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Intellectual Property Crime Threat Assessment 2022 just published

Intellectual Property Crime Threat Assessment 2022 just published

The latest Intellectual Property Crime Threat Assessment , produced jointly between Europol and the European Union Intellectual Property Office (EUIPO), has been published today.


This report reveals that the distribution of counterfeit goods has been thriving during the COVID-19 pandemic and that the health crisis has presented new opportunities for trade in counterfeit and pirated products, and criminals have adjusted their business models to meet the new global demand.


According to this report, counterfeit pharmaceutical products (ranging from a variety of medicines to personal protective equipment or face masks) have been increasingly identified in recent years. Distribution has shifted almost entirely from physical to online markets, raising public health concerns. These illicit products largely continue to originate from outside the EU, but they may also be produced in illegal laboratories within the EU, which are difficult to detect and can be set up with relatively few resources.


The frequent seizure of counterfeit packaging materials and semi-finished products on entry to the EU clearly points to the presence of manufacturing facilities in the EU (some for partial assembly and others running full production cycles).


In addition to the categories of counterfeited clothes and luxury products seized, there is a growing trade in fake products which have the potential to damage human health, such as counterfeit medicines, food and beverages, cosmetics and toys.


The production of illicit food products, and especially drinks, has become more professional and sophisticated, with some counterfeiters covering the whole supply and distribution chain. Violations of protected geographical indications continue to be widely reported too.


The threat assessment highlights that the distribution of counterfeit products mostly relies on digital platforms, a trend which has been reinforced by the pandemic and widespread online consumption. Counterfeit goods are offered on online marketplaces, via live-streaming, videos and advertising on social media platforms, and instant messaging services, usually targeting customers with misleading discounts or low-price branded products.


Websites illegally distributing audio-visual content are hosted on servers across Europe, Asia and the Middle East. The criminals involved are adept at using advanced technical countermeasures. In some cases, digital content piracy is linked to other cybercrime activities such as crypto-jacking or the distribution of malware. Pirates exploit new technologies to conceal digital traces and use proxy services to create resilient hosting networks. The online presence during the COVID-19 pandemic led to an increased offer of high-quality streaming devices and a variety of illicit content offers.


The online and offline distribution of fake and substandard goods has been a key criminal activity during the pandemic. The health crisis caused by COVID-19 has highlighted the fact that criminal organisations recognise no borders and take advantage of the slightest weakness or lack of coordination to strengthen their grip.


We consider it a great success that IP crime has been included as one of the EU’s priorities in the fight against serious and organised crime from 2022 to 2025 as part of the European Multidisciplinary Platform Against Criminal Threats (EMPACT).


Author: Juan José Caselles

Head Anti-Counterfeiting Dept. ELZABURU

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2021 Review of Notorious Markets for Counterfeiting and Piracy

2021 Review of Notorious Markets for Counterfeiting and Piracy” just published by the Office of the United States Trade Representative[1]

The Notorious Markets List identifies prominent and illustrative examples of online and physical markets in which pirated or counterfeit goods and services are reportedly available or which facilitate, turn a blind eye to, or benefit from substantial piracy and counterfeiting. This report identifies 42 online marketplaces and 35 physical marketplaces that participate in or facilitate these violations. This year’s Issue Focus of the Notorious Markets List examines the adverse impact of counterfeiting on workers who are involved in the manufacture of counterfeit goods. Past issue focus sections highlighted e-commerce and the role of Internet platforms in facilitating the importation of counterfeit and pirated goods into the United States (2020), malware and online piracy (2019), free trade zones (2018), illicit streaming devices (2017), stream ripping (2016), emerging marketing and distribution tactics in Internet-facilitated counterfeiting (2015), and domain name registrars (2014).


According to this report, manufacturers of counterfeit goods operate outside of regulations and inspection systems, leading to widespread labor violations alongside already well-known intellectual property violations. There is an opportunity for the companies and enforcement authorities that work to shut down counterfeiting operations for intellectual property violations to collaborate and coordinate with those focused on forced labor and other workers’ rights violations to uncover and remedy these critical issues. If labor inspectors, labor-focused organizations, workers’ rights associations, and others target counterfeit manufacturing facilities for enforcement, this will not only protect workers and consumers, but will also reduce global trade in counterfeit goods.


The U.S. Department of Homeland Security[i] explains that counterfeit goods are “often produced in unsafe workplaces, with substandard and unsafe materials, by workers who are often paid little or sometimes nothing in the case of forced labor”. Non-governmental organizations and industry contacts have reported that factories located in China making counterfeit products often have unsafe working conditions that do not adhere to local or international environmental, health, and safety standards. Right holders report that detecting these facilities is increasingly difficult for them because the operators know their operations are illegal and therefore take measures to evade detection.


In 2021 the world continued to adjust to the COVID-19 pandemic. Government restrictions on tourism and movement resulted in some markets known for openly selling counterfeit goods, such as MBK Shopping Mall, Patpong Street Market, and Soi Nana in Thailand, reportedly having no, or very few, of the problematic stores open. Such reductions or cessations in counterfeiting activity are not necessarily the result of improved policies or enforcement practices at these markets. Some shops have adapted, however, with sellers of counterfeit goods transitioning from physical stores to e-commerce platforms and using the physical storefronts to facilitate the fulfillment of online sales. Online sellers of counterfeit goods have also increased efforts to evade the anti-counterfeiting processes and systems established by governments and e-commerce platforms by, for example, using social media advertisements and influencers, hidden links, and drop shipping schemes.


Actions against pirate streaming services, including wholesale pirate stream suppliers and resellers of pirate-enabled Internet protocol television (IPTV) apps and physical illicit streaming devices (ISDs), also continued in 2021. Private companies and associations are also achieving impressive results against online piracy services.

In relation to Spain we find Pelisplus (it offers a content management system that lowers the barriers to entry for commercial piracy services; it also  operates its own Spanish-language piracy site that is popular in Latin America and Spain, offering more than 7,000 links to unlicensed copies of more than 4,000 movies and television series); Sci-Hub (it is reported that Sci-Hub and its mirror sites, like Libgen, facilitate unauthorized access to approximately 88 million journal articles and academic papers, which is 85 percent of all articles published in toll-access journals, with blocking orders being issued by Spain and other countries); and ThePirateBay (one of the first bittorrent indexing websites and one of the most vocal in openly promoting piracy, it remains the most frequently visited bittorrent index site in the world; it does not respond to any notice-and-takedown requests and Spanish authorities and authorities in other countries have issued orders blocking access to this site).

Fortunately, this year no physical market in Spain is included in this blacklist of worldwide counterfeits.   [1] https://ustr.gov/sites/default/files/IssueAreas/IP/2021%20Notorious%20Markets%20List.pdf

Author: Juan José Caselles

Head Anti-Counterfeiting Dept. ELZABURU

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MWC 2022 is approaching

MWC 2022 will be held in just two weeks, from February 28 to March 3, in Barcelona

This will undoubtedly be an important year for the fair which, after the unexpected cancellation of MWC 2020 due to the pandemic and the “hybrid” celebration (physical/digital) of the next edition of the congress in 2021, returns to the eminently face-to-face format in the facilities of the Fira de Barcelona.


As there have been no relevant cancellations on the part of the attending companies, it is expected that this edition will recover (or at least come close) to the activity and impact that this great congress had in the years preceding the pandemic.

It is to be expected that this “return” to the MWC as we knew it will also bring with it a return to litigation conflicts between companies regarding possible infringements of industrial property rights (which last year experienced a notable decline, undoubtedly due to the significant absence of participants at the congress and the “decaffeinated” format in which it was held). In anticipation of these conflicts, and as it has been doing for years, the Commercial Court of Barcelona (together with the EU Trademark Court of Alicante) has approved a “Protocol for on-call service and rapid action” in order to ensure that requests for precautionary measures and preliminary proceedings relating to infringements of industrial property rights in the context of the congress are processed expeditiously. Thus, among others, the Court has undertaken the following essential commitments:  
  • To resolve on the same day of their presentation (24 hours) the requests for protective letters aimed at avoiding the adoption of precautionary measures without hearing the defendant company
  • And to resolve within two days (48 hours) the requests for preliminary proceedings, verification of facts proceedings and precautionary measures (in this third case, provided that they are requests without hearing the defendant and the latter has not filed a protective letter, in which case a hearing would be scheduled within 10 days)  .
ELZABURU has attended the last editions of the MWC with its clients and has a solid experience in handling legal disputes in the context of the fair (in fact, by way of example, of the 18 cases that went to Court in the MWC 2021 edition, 15 of them were handled by ELZABURU). This year, once again, the Firm is at the disposal of its clients to advise, assist and defend them in relation to any conflict that may arise in the context of MWC 2022 related to infringement of industrial property rights.  

Author: Maria Cadarso Díaz de Entre-Sotos

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Jamaica joins Madrid Protocol

bandera, jamaica, mar

The number of countries that have joined the Madrid System has risen considerably in recent years. The number of countries from the Americas joining the Protocol is particularly significant, giving rise to new protection opportunities for trademark owners with interests in that part of the world.

Jamaica is the latest country to announce that it is joining the Madrid Protocol, which is set to enter into force on 27 March 2022.


North American influence (mainly USA and Canada) in commercial relations is particularly strong in Jamaica. And while it is not a big market for brands internationally and consumption of foreign goods is modest, it is undoubtedly an important international tourism hub where Spanish hotel companies have a considerable presence. It is also a big producer and exporter of sugar cane, spices and fruit, coffee, tobacco and cannabis (a growing market in the pharmaceutical and therapeutic sector) and, of course, reggae music, since Jamaica is the birthplace and home of reggae.

Author: Cristina Arroyo

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Draft bill opens the door to legal deposit of video games

mandos, manos, jugar, videojuegos

We live in a society that is constantly changing and evolving and, with this in mind, on 29 December 2021 the Council of Ministers of the Spanish Government approved the draft bill amending the Legal Deposit Act (Act No. 23/2011 of 29 June 2011) to provide for more effective preservation of the country’s publications and optimise the management of preservation centres.

deposito legal, edificio, madrid


First of all, it is important to mention that legal deposit is the legal obligation that provides for the compilation of copies of publications of all kinds, whether in physical format or online, at the preservation centres of Spain’s Autonomous Communities and the National Library. These administrative bodies are responsible for preserving Spain’s bibliographical and documentary heritage as well as its digital heritage, online publications, websites and electronic books and magazines.

The draft bill includes the following changes: firstly, publishers will be able to directly deposit copies in digital format, in addition to or in place of printed copies, provided that they are books, press publications and/or magazines. The purpose of this change is to facilitate the preservation of and access to documents, avoiding the need to convert these copies to digital format in the future.

Moreover, it adds the legal deposit of publications produced on demand, which was not included previously, and it recognises as preservation centres the Filmoteca Española (Spanish National Film Archive) and the Filmotecas (Film Archives) of Spain’s Autonomous Communities, whose objectives are to recover, research, preserve and disseminate Spain’s cinematographic heritage.

New categories for legal deposit are included, such as video games, commercial catalogues of bookshops, publishers and auction houses, as well as bookmarks, among others. With regard to video games, it should be pointed out that this is a significant change, given that under the previous legislation they were included in the category of audiovisual documents, whereas now they will have their own category with a view to ensuring the deposit of all publications of this kind.

Lastly, the changes include the removal of the requirement to deposit microforms, which have become obsolete, as well as all types of advertising publications, which are of no interest for purposes of heritage preservation, as stated in the draft bill. Moreover, pursuant to Constitutional Court doctrine, the draft bill eliminates the function of Higher Inspectorate, which had been the responsibility of Spain’s National Library.

The draft bill also incorporates the changes resulting from Royal Decree No. 635/2015 of 10 July 2015 regulating the legal deposit of online publications, which facilitates the preservation of the country’s digital heritage.

Finally, it is worth noting that this bill was drawn up in collaboration with the Autonomous Communities, the Federation of Publishers’ Guilds of Spain, the Spanish Video Game Association and the Spanish Centre for Reprographic Rights, with the aim of adapting to changes in the publishing sector, as well as providing for more effective preservation of the country’s publications and optimisation of the management of preservation centres.

Authors: Mabel Klimt and Paula Bellés

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