combating counterfeits on the global front: best … · combating counterfeits on the global front:...

COMBATING COUNTERFEITS ON THE GLOBAL FRONT:

BEST PRACTICES

Elisabeth Bradley, Bristol-Myers Squibb Company Aslam Mohamed, RNA IP Attorneys, India

Philip Yu, DuPont China Moderator: Monica Riva Talley, Sterne, Kessler, Goldstein & Fox, PLLC

I P O A N N U A L M E E T I N G N E W Y O R K

INTRODUCTION

Ø  Counterfeiting Defined:

§  Imitation products, with or without brand name.

§  Grey market, diversion.

§  Use of brands to attract clicks/sales.

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Ø  Overview of Panel

§  Elisabeth Bradley, Bristol-Myers Squibb Company

§  Aslam Mohamed, RNA IP Attorneys, India

§  Philip Yu, DuPont China

§  Moderator: Monica Riva Talley, Sterne, Kessler, Goldstein & Fox, PLLC

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INTRODUCTION

Ø  Goals of session:

§  Share best practices.

§  Explore jurisdictional differences, enforcement options.

§  Help companies initiate, or enhance, anti-counterfeiting efforts.

§  Tips and takeaways.

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INTRODUCTION

BRISTOL-MYERS SQUIBB’S PROGRAM

Ø  Targeted online program; partner with vendor.

Ø  Modules: Websites, Marketplaces, Social media.

Ø  74% compliance rate overall.

Ø  Remainder: Corp Security involvement; authorities.

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ENFORCEMENT EXAMPLE – WEBSITE MODULE

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Corporate Security - BMS Internal

•  First Detect Date: 05/12/2016 •  First Enforced Date: 05/12/2016 •  Compliant Date: 05/26/2016 •  Page offered Daklinza for sale, along

with contact information

•  Facebook removed the entire page due to enforcement efforts

•  h#ps://www.facebook.com/profile.php?id=923342401118296

ENFORCEMENT EXAMPLE – SOCIAL MEDIA

DUPONT

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Ø  Much of the global counterfeiting could be traced back to just a few countries.

Ø  Multi-pronged enforcement in China.

Ø  Cross-border collaboration.

Ø  Driven by the Business Units as the stakeholders.

DUPONT – MULTI-PRONGED ENFORCEMENT

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Ø  “Boots-on-the-Ground”– track down illegal manufacturers, formulators and traders, by collaborating with local police (PSB) and other administrative agencies (AIC).

Ø  Regulatory agencies – agricultural, health & safety, quality, consumer protection etc.

Ø  Customs – recordation and training at various customs sites.

Ø  Online – monitor e-commerce en mass.

Ø  Legal/IP team, BP team of the Business, Corp Security + external PI firms.

DUPONT ENFORCEMENT EXAMPLES – POLICE

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DUPONT ENFORCEMENT EXAMPLES– CUSTOMS

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DUPONT EXAMPLES– ADMIN ACTION

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RNA IP ATTORNEYS

§  Global Retail eMarketer 24 trillion

§  Internet eMarketer 1.6 trillion

§  ICC BASCAP Fake Market 1.7 trillion

§  SIPRI World Military Spend 1.6 trillion

§  India GDP 2.2 trillion

§  2.5 million legitimate jobs at risk each year.

§  China World Leader in Fakes.

§  India hub for fake medicines (Washington Post). 13

RNA IP ATTORNEYS

Ø  Physical Markets

§  Auto Parts.

§  Drugs.

§  Movies & Music.

§  Electronic & Software.

§  Books.

§  Apparel & Footwear.

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RNA IP ATTORNEYS

Ø  Online Markets

§  Legal Fakes : Jack Ma “Same Quality Different Brand”.

§  Drugs: Of 8,000 websites most offer counterfeits (NABP).

§  Small Pack Deliveries : Evades enforcement.

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RNA IP ATTORNEYS

Ø  Indian counterfeit drug market:

§  Largest manufacturer of generic drugs globally.

§  2nd largest exporter of OTC and Prescription to US.

§  3rd largest pharmaceutical drug producer by volume.

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RNA IP ATTORNEYS

Ø  WHO finds 1 in 5 drugs made in India are fakes. In New Delhi pharmacies 12 percent of sampled drugs were spurious. Main Issues:

§  Safety lapses.

§  Falsified drug test results.

§  Generic versions of Accutane, Neurontin and Cipro faked.

§  GNC, Target, Walgreens and Wal-Mart received fake herbals.

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criminal action

complaint before Magistrate u/s 156(3) direct through police, DCP, ACP

directions to investigate search & seizure warrants issued

follow up with police and TMO for Sec. 115 approval

Raids Arrest FIR

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Ø  Despite the stalemate on OCR 2015, India:

§  established the High Level Working Group on Intellectual Property under the auspices of the United States-India Trade Policy Forum.

§  embarked on a thorough review of its IPR regime to produce a National IPR Policy.

The National IPR Policy was adopted in May 2016.

COUNTERFEIT COMBAT– INDIAN POLICY INITIATIVES

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PACKING COUNTERFEITS COLLECTING MATERIALS

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PACKING COUNTERFEITS READY TO GO

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MANUFACTURING COUNTERFEITS COLLECTING THE OIL

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MANUFACTURING COUNTERFEITS FILLING ORIGINAL CANS

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STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.

Ø  Brand protection across industries.

Ø  Some current projects– multimedia products, musical instruments, medical implants.

Ø  Enforcement – online, boots-on-the-ground, law enforcement, litigation, ITC.

Ø  Business solutions – brand protection strategies, consumer education, retailer solutions, certification programs.

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STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.

MAKING THE CASE

Ø Investigate the risk; how serious is it?

Ø Gather data and articulate risk.

Ø  Getting funding.

Ø  Get to the root.

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MANAGING BRAND PROTECTION PROGRAMS

Ø  Where does it sit within your company?

Ø  Who manages?

Ø  How do you work internally? Cross-functional?

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LEVERAGING BRAND PROTECTION PROGRAMS

Ø  Use of technology.

Ø  External partners.

Ø  Working with Law Enforcement.

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PRIORITIZING EFFORTS

Ø  Managing volume.

Ø  Strain on resources.

Ø  Assess program goals.

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TAKEAWAYS

Ø  Cross-functional coordination critical.

Ø  Building good external relationships also critical.

Ø  Consider partnering among your industry.

Ø  Dedicate proper resources; prepare for long fight.

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MEASURING SUCCESS

Ø  Set appropriate program goals.

Ø  Demonstrate ROI.

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….IS IT THE END?

RESULTS ….

THANK YOU!

Contact Info

§  Elisabeth Bradley, Elisabeth.Bradley@bms.com, +1 (609) 252-4457

§  Aslam Mohamed, aslam@rnaip.com +91 (44) 42147426

§  Philip K. Yu philip.k.yu@dupont.com, +86 (21) 3862-2776

§  Monica Riva Talley, mtalley@skgf.com, +1 (202) 772-8688

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QUESTIONS? DISCUSSION?