Anti-Counterfeiting Department: KISCH IP

Vanessa Ferguson

7 September 2018

FMCG Illicit trade and impact on counterfeiting

Measures to avoid counterfeiting and Piracy – A Regional Perspective

PANGEA• Supercontinent that

existed during the Paleozoic era

• Assembled from earlier continent units 335 years ago

• Started breaking up 175 million years ago

Going back to our roots

FWD 175 million years…- International trade relations- Trade free zones - Online Trade: growing in Africa (South

Africa, Nigeria & Kenya)- Connectivity- International investment- International demand

Cross- border trade & transit routes

Practical challenges – Regional groupings

Country Membership to Regional Economic Communities

• complex web of competing Commitments

• different rules and standards

Results in: • high costs to intra-Africa

trade; and • undermine trade facilitation

efforts

Practical challenges – Regional groupings• Enforcement of these trade marks in each

territory– covered by the local national laws and – the underlying principles of territoriality.

• Southern Africa now finds itself in a difficult position in balancing:

Freedom of movement of goods between territories

Territorial limitations in IP Rights enforcement.

Concerns – cross- border trade

Borders & Informal Trade Est. over 3 million migrant workers in SA Porous borders Two push factors intra SADC trade:

Widespread unemployment Shortage of essential goods in the region

Informal cross border trading accounts for close on 40% of intra SADC trade. Source of funding: Personal and family savings Quantities: 3-4 cartons, boxes or bags per trip. Transport of goods: By bus, coaches or on foot. Type of goods: Goods that sell quickly

Practical challenges – MDC Route

The MDC route connects the landlocked Gauteng, Mpumalanga and Limpopo provinces to the port of Maputo in Mozambique.

Practical challenges – Trans Kalahari Corridor

The TKC is a joint corridor initiative between the governments of South Africa, Namibia and Botswana

Practical challenges – Border Concerns

• Border relations and disconnect• Profiling of specific consignments• Informal cross border trade not targeted

• Lack of bonded warehouses & truck stops• Management of the corridors• Safety & security: Corruption• Human resources: lack of trained inspectors &

officials• High Trade Volumes of goods

Enforcement Concerns- Costs of securing registration are relatively expensive

(including prosecution costs) - there are often long delays in the application process- Traditional Enforcement and litigation expensive and lengthy- Lack of awareness/ respect of IP on the continent- Lack of specialist IP courts- Lack of precedents

(South Africa & Kenya – Good judgments and results)

Practical challenges – Regional groupings

Practical steps in dealing with illicit goods

• Registration/ Enforcement of Registered Trade Mark Rights (Territorially limited)

• Regional Registration systems (ARIPO & MADRID)• Enforcement of Common Law rights• Protection of unregistered trade marks (well-known)• Copyright or other rights (Patents/ Designs)• Customs Provisions • Regulatory Provisions

• Industry specific regulations (Pharmaceutical, Liquor etc)• Labelling regulations• NCRS Requirements

Points for inclusion in an effective strategy

- Focus on all major ports (South African & Neighbouring territories)- Mozambique, Namibia, Angola, Tanzania & Kenya- Protection of IP rights; Customs registrations (formal & informal)- Inspections and investigations

- Focus on all neighbouring borders- Education, awareness, lobbying

- Focus on interception points along main corridors- Understanding of main distribution points and operations- Collaboration

- Industry specific and related industries - Involvement of International stakeholders

- Cross border industry bodies; WCO, Interpol, WIPO

World Customs Organisation (WCO) WCO is the only intergovernmental organization

exclusively specialized in customs issues. drafting international customs norms, simplifying and

harmonizing customs regimes WCO has also developed the Interface Public Members

(IPM), that provides fast detection of counterfeited items. IPM:

Egypt, Morocco, Tunisia, Angola, Djibouti, Kenya, Madagascar, Seychelles, Mauritius, Mozambique, South Africa, Tanzania, Uganda, Benin, Cameroon, Cape Verde, Central African Republic, Democratic Republic of Congo, Congo, Kenya, Liberia, Senegal and Togo

18

The Role of INTERPOL

Priority is combating transnational organized crime, includes counterfeiting

INTERPOL’s legal assistance program : aims to support states in setting up effective legal frameworks against illicit trade and counterfeiting and in training all actors involved in the criminal justice process

INTERPOL/UNICRI initiative, is the creation of a jurisprudence database on IP-related matters

Active in Africa19

The Role of WIPO

Training courses on IP right enforcementTraining of officials and enforcement

officers (CIPC collaboration)Online tools & services

20

Questions & Concluding thoughts

Vanessa FergusonKISCH IP

vanessaf@kisch-ip.com+27 11 324 3000

0824164901

Thank YouVanessa Ferguson