Kari Kammel, 2022
Overview of the Criminalization of Trademark Counterfeiting Globally
The phenomenon of trademark counterfeiting is global in nature and spans almost every jurisdiction in the world where branded products are sold. Recent estimates by the OECD quantify the trade of trademark counterfeiting globally as more than USD 464 billion in 2019, or 2.5% of world trade, with customs seizures of counterfeit and pirated goods consistently exceeding 130,000 yearly. Governments often criminalize trademark counterfeiting, as well as legislate a cause of action for civil trademark infringement. Countries often have both of these legal approaches, but they use them in varied ways, often inconsistently from jurisdiction to jurisdiction and sometimes even within the same jurisdiction. For example, the U.S. criminalized trademark counterfeiting at the federal level in 1984 with the passage of the Trademark Counterfeiting Act. States in the U.S. then passed similar but sometimes widely varying criminal trademark statutes after that, which we have examined in prior studies. Many of the countries in this study have only passed legislation criminalizing trademark counterfeiting recently, with one of the more recent being Ecuador in 2016.
In this project, we researched criminal trademark counterfeiting-related legislation and evidence of prosecutions in 24 countries, and additionally the approach of the European Union. Our initial goal was to understand, describe and evaluate the effectiveness of criminal punishment for trademark counterfeiting in this comparative study, while also exploring the feasibility of further studies of global governmental criminalization and prosecution of trademark counterfeiting. We found open source data on criminal statutes, as well as evidence of criminal prosecutions in the form of press releases and some caselaw or case details. Because of the international nature of this project, many cases require local access to a country level criminal database system, accessing materials under the local language, or working with local lawyers to access relevant data. While many of the countries examined have some type of criminal anti-counterfeiting statute and some evidence of use, much of the details of prosecution or the case details are not easily available in open source information. The available information we found often referred to how the criminal procedures work and who administers criminal investigations and prosecutions.
Exploration of Countries Anti-Counterfeiting Legislation and Resulting Prosecutions
In this section, we surveyed and examined legislation, press releases, and other information gathered about criminal anti-counterfeiting statutes, both in common and civil law countries, from the following jurisdictions: Argentina, Bolivia, Brazil, Canada, China, Ecuador, France, Germany, Greece, India, Israel, Italy, Mexico, Panama, Romania, Russia, Sweden, Taiwan, Turkey, United Arab Emirates, Uruguay, United Kingdom, Vietnam, and the European Union. We also examine recent cases that have been prosecuted under these statutes. As one might imagine, the statues vary widely, as do the cases brought under them. We looked primarily at trademark statutes, but also investigated overlapping areas in intellectual property, such as copyright, industrial designs, and trade secrets.
In our searches, for many of these countries, we found evidence of police or customs activity in the form of raids or seizures that were published in the news or in press releases, but less evidence of criminal cases. Many articles or press releases referenced pending criminal prosecution or cases based on the raids or seizures, which we cite below.
Argentina has several laws that govern intellectual property. The first is Law No. 11.723, which sets out the “legal regime of intellectual property” for the country and deals primarily with copyright; Law No. 11.723 is primarily a civil law, but also allows for criminal action to be brought as well.  Law No. 22.362 covers trademarks and designations, and Decree-Law No. 6.673, meanwhile, governs industrial designs. Finally, the Penal Code of Argentina, Articles 289 and 290, specifically address “falsifying” or “making” false trademarks or manufacturers.
There is some evidence of individuals being criminally prosecuted in Argentina for trademark counterfeiting. In 2020, the Argentinean cyber police identified an active Facebook store selling high end brands at a low cost. The people involved in this crime were tracked down through the contact number on the facebook publications, and more than 4,577 clothing items were seized, at least 15 people charged in the case, of which 5 have already been convicted of the crimes of fraud, fraud to the public administration and violation of the measures adopted by the Covid-19 pandemic. The Public Prosecution of Ministry of Argentina destroyed 50,000 masks equivalent to 2 million Argentine Pesos, as well as equipment used to make the masks. The masks were very similar to other branded masks and the packaging included labels specifying that the masks were developed in connection with Conicet, M3, KN-95 between other companies.
In 2021, a famous clothing store was closed because they were selling counterfeit clothing items. Several brands whose products were being counterfeited reported to the prosecution, which as part of the Fraud and Fraud Division of the Economic Crimes Department of the City Police, in conjunction with the General Directorate of Operational Coordination of the Buenos Aires Ministry of Justice and Security raided the store. The prosecutor was acting under article 289 of the Penal Code that penalizes trademark counterfeiting; and the owner of the store was later charged under this article. Famous soccer players and singers posted their purchases from this store on social media.
In Bolivia, intellectual property is protected under a few different laws. On the civil side, the Regulatory Law of Trademarks sets out the general law on trademarks and industrial and commercial registrations for the country;  and Law No.1322 covers copyright and neighboring rights. On the criminal side, the Penal Code, specifically Chapter X, covers intellectual property crimes.
Criminal prosecution and penalties in Bolivia appear to be minimal. The maximum penalties for intellectual property crime in Bolivia do not exceed three years, and the perpetrator of the crime usually does not go to jail, as they can substitute that penalty for another measure such as regular check-ins with the court.
In 2015, Operation Jupiter VII, which involved 11 countries, including Bolivia, seized over 800,000 counterfeit goods, and resulted in USD $130 million of counterfeit goods being removed from the markets and over 800 people arrested or placed under investigation.
In 2018, two people were captured for selling counterfeit kitchen items in an open
market. The police discovered that they were storing several kitchen items without a mark in a motel close by and were subsequently adding trademarks of different brands. In addition, the police discovered that one of the men had been eluding the authorities of another city in Bolivia because he was found guilty of drug trafficking.
Additionally, Bolivia has taken steps to improve its responses to illicit trade, including counterfeits such as the Port Control Unit, comprised of Bolivian Special Force to Fight Drug Trafficking (FELCN) and Bolivian Customs officials, who in 2019 were trained and equipped to identify risk profiles of containers that may contain counterfeit, amongst other illicit products.
At the end of 2020, the Bolivian health authorities were notified about the counterfeiting of chocolates that were being distributed in open markets. The authorities determined that the chocolate was in fact counterfeited; they collected all the products and taught people how to identify a genuine chocolate from a counterfeited one.
The legal framework of Brazil’s intellectual property law consists of four main statutes, both the civil and criminal variety: (1)the Industrial Property Law (criminal), which “regulates rights and obligations regarding industrial property,” (2) the Copyright Law (civil), which governs copyright and neighboring rights; (3) the Software Law (criminal) concerns the protection of intellectual property of software, and the (4) Internet Law (civil) “establishes the principles, guarantees, rights, and obligations for the use of [the] Internet in Brazil.”
Evidence of actions against criminal activity are seen through media articles, such as in October of 2021, approximately 20,000 pairs of shoes were intercepted in Brazil, with the total value estimated to exceed R$1 million. In a separate incident the same month, an individual was found to be counterfeiting alcoholic beverages, including well-known brands such as José Cuervo and Ciroc. The individual in question had previously been ticketed for the selling of counterfeit products and for theft, and has subsequently been fined and jailed.
Canada’s intellectual property law is governed by three main statutes (two civil and one criminal): the Trademarks Act, the Copyright Act, and the Criminal Code. Section X of the Criminal Code in particular deals with Fraudulent Transactions Relating to Contracts and Trade, including trademark violations and counterfeiting.
Although Canada is no stranger to prosecuting offenders for crimes listed under these statutes, the Canadian criminal justice system seems to lean more towards the imposition of fines as punishment in place of imprisonment. In 2019, 9 people were charged with selling or distributing counterfeit goods in an Ontario mall. Prior to that in 2014, an individual was sentenced to 2 months’ incarceration for trademark and copyright offenses, which included the sale of counterfeit goods.
In the three years following the introduction of the Combating Counterfeit Products Act in 2014 meant to increase seizures, Canadian customs officers only detained a total of 48 shipments of potential counterfeit goods. Additionally, in September 2021, a joint effort between the Ontario Provincial Police, the Canadian Anti-Counterfeiting Network, the United States Department of Homeland Security, and the Canadian Anti-Fraud Centre conducted a search and seizure operation in Wasaga Beach, Ontario, Canada. The investigation involved six stores and resulted in the seizure of $700,000 worth of counterfeit products. The investigation is ongoing and charges are pending as of the writing of this article. However, many believe that Canada is not seizing enough shipments of fake goods despite having a law targeting counterfeits.
There are four main laws which provide the legal framework of intellectual property law in the Republic of China. The three civil laws are: the Trademark Law, the Law Against Unfair Competition, and the Tobacco Monopoly Law. Each of these laws lays out its purpose of promoting the development of a socialist market economy, as well as protecting the interests of consumers. Under the Criminal Law of the Peoples’ Republic of China, Articles 213, 214, and 215 govern criminal charges for trademark counterfeiting.
Procedurally, both the public prosecutor and the IP rights holder can initiate criminal proceedings in China. If the level of counterfeiting meets the threshold for criminal action, the AIC office or Chinese Customs will transfer the case to the police, who transfer the case to the prosecutor. Police can start an investigation after the IP rights holder informs them as well. The IP rights holder can also directly bring a charge before the court with enough evidence.
China has begun to show an increased interest in enforcing intellectual property rights through criminal adjudication. According to a report by Merchant & Gould, China courts heard 4,982 cases relating to trademark infringement in 2019, which was a 21% increase from the previous year.
An example of two cases show some details of increased criminal adjudication. For example, on October 28, 2021, the head judge of the Intellectual Property Tribunal of Shanghai Pudong New Area People’s Court and others sentenced five individuals to “imprisonment ranging from one year seven month to three years for the crime of counterfeiting registered trademarks for KIWI shoe polish” and also fined them for the crime. This trial and sentencing follows a March 2021 raid on the counterfeiting locations of the defendants and their arrest by the Shanghai police.
Additionally, in October of 2021, 69 defendants were sentenced for counterfeiting luxury goods.
The main law governing intellectual property in Ecuador is the Organic Code on the Social Economy of Knowledge, Creativity and Innovation. The Comprehensive Organic Criminal Code has several provisions related to counterfeiting of goods: Article 217 penalizes the production, manufacture, marketing and distributions of counterfeit drugs with imprisonment of up to three to five years. Article 235 penalizes the deception of the buyer regarding the identity of goods sold. Article 208A sanctions trademark counterfeiting and piracy that is harmful to copyrights with fines.
Intellectual property rights holders and practitioners in Ecuador have recently pushed to increase criminal sanctions, but as of yet, they have not been very successful. Some evidence of prosecution of counterfeits exists in Ecuador. The first successful case of criminal prosecution of pharmaceuticals was in 2016, where after a raid and seizure of over 1.5 million counterfeit tablets, a man was sentenced to one year in custody. In 2019, the National Service of IP in Ecuador, imposed a large fine in a trademark infringement case, amounting to $95,625, on a group of offenders accused of copying the 3D design of Crocs. In July of the same year, the Ecuadorian Police reported that they seized around 1.700 products in 4 different operatives.  In 2017, 7 people were accused of counterfeiting Pfizer and Merck medicine; and six of them were prosecuted.
The French Intellectual Property Code covers copyright, patent, trademark, and trade secret law, and the French Customs Code covers general customs procedures and in the process deals partly with trademark protection and the handling of counterfeit goods.
Through preliminary research we were able to locate several examples of criminal prosecution within the country via news articles and press releases. An inside criminal ring that was creating fakes of the Hermes brand was faced with criminal charges in 2020; the crimes took place in 2011, but criminal sentences were handed down eight years later ranging from six months to three years. France has also applied their enforcement measures to e-commerce platforms. In 2020, France launched an investigation into the US-based e-commerce platform, Wish. The report generated from that investigation was referred to a court in Paris to determine the online retailer’s guilt. It should also be noted that France does not stop its criminal prosecutions at the manufacturers and distributors of counterfeit goods, but also prosecutes those found in possession of fake designer goods.
Regarding seizures, it appears that seizures of counterfeits by the French government peaked in 2016 and have decreased since then.
There are several pieces of legislation in Germany which deal with intellectual property: the Trademark Act, the Design Act, the Utility Models Act, the Copyright and Related Rights Act, the Act Against Unfair Competition, and the Trade Secrets Act.
As in other European countries, there is evidence of Germany arresting and prosecuting suspected counterfeiters. In 2019, three German nationals were arrested in the US and faced prosecution in both the US and Germany for operating a ‘darknet’ market that facilitated the sale of counterfeit goods, among other things. In 2019, German customs and law enforcement, working with HP’s brand protection team, seized thousands of counterfeit computer components and printer cartridges.
Intellectual property law of Greece is protected by the Trademark Law 4679/2020; Law 2121/1993 on copyright, related rights, and cultural issues; Unfair Competition Law 146/1914; the Penal Code; and the Code of Criminal Procedure.
In Greece, there are some examples of counterfeiters being charged with crimes under these statues. For example, over 16,000 bottles of counterfeit alcohol were brought in between September 2020 and January 2021 with pending criminal cases. A case was also brought forth against a warehouse owner who planned on selling more than 800 units of counterfeit clothing items.
India addresses intellectual property law, including: The Trademarks Act; the Copyright Act; the Geographical Indications of Goods (Registration and Protection) Act; the Drugs and Cosmetics Act; the Food Safety and Standards Act; and the Information Technology Act. The Customs Act’s Chapter IV gives the “power to prohibit importation or exportation of goods” for “the protection of patents, trade marks, and copyrights.” Finally, on the criminal side, there is the Indian Penal Code and the Code of Criminal Procedure, in which Chapter XVIII particularly deals with counterfeiting marks, devices, use of counterfeited marks, and more.
Current trends towards digital platforms have created new challenges for the government with combating the proliferation of counterfeit activity. Advertising counterfeit goods on e-commerce sites, as well as deceptive domain names allows infringers a shield of anonymity when posting goods. In M S Mont Blanc Simplo GMBH v. Gaurav Bhatia, the court held the defendants in contempt for deliberately infringing on the plaintiff’s trademark rights through “www.montblancwriting.com” after a judgment for nominal damages and a submission that the defendants would no longer violate the plaintiff’s trademark. The court appointed local commissioners and police officers to visit the premises of the defendants and take into custody the impugned products. Although the issue of online counterfeiting will seemingly continue in India, as the rest of the world, as this case illustrates, the actionability against counterfeiting in the country has a statutory foundation. Awareness campaigns led by the government and brand owners seek to enlighten the public on the dangers of such illegal activity and the criminal and civil penalties that can be placed on infringers. Along with increasingly sophisticated technology that can detect illegal brand usage throughout the interwebs, it is becoming increasingly feasible to prosecute trademark infringement in India.
In September, the Economic Offenses Wing of the Mumbai Police conducted raids at a shopping center and recovered a number of counterfeit watches and several individuals were arrested during the raid.
In Israel, trademark counterfeiting is criminalized under section 3(2) of the Merchandise Marks Ordinance, which applies to false trade description of goods. Trademark counterfeiting carries a penalty of up to 3 years imprisonment and a maximum fine of up to 1.5 million shekels ($300,000 USD). Corporations are subject to a double fine.
Italy’s intellectual property law is established through three main pieces of legislation: the Code of Industrial Property (civil), the Copyright Law No. 633 (civil), and the Criminal Code (criminal). The first of these consolidated the principal laws relating to intellectual property matters in Italy, especially those concerning trademarks and trade secrets. The second concerned the protection of copyright and neighboring rights. As for the Criminal Code, Articles 473, 474, and 648 deal with trademark infringement while Article 623 deals with trade secret matters and Article 517 deals with unregistered marks.
A 2019 operation involving Europol and other law enforcement personnel named “Oro Giallo” led to the arrest of 24 people and a seizure of $1.34 million worth of fake olive oil. The criminal organization would sell one million liters of fake oil to Germans every year. We also were able to identify product seizures that the financial police were able to take from counterfeiters. In Early November 2021 they seized over 600 pieces of counterfeit fashion products from street vendors. From 2020 of last year until August 2021, over 3,000 tons of counterfeit pellets that are used to help keep homes warm during the colder months. Counterfeit alcohol was also seized by government officials. This preliminary research indicates that seizures and eventual prosecutions do take place within Italy; however, as with many countries above, additional time and resources will be needed to identify the extent of these actions.
In Mexico, Mexican Institute of Property (IMPI) was passed in 1993 and is focused on: “a decentralized public body with legal personality and its own assets and with the legal authority to administer the industrial system in Mexico.” Mexico also has the Federal Law for the Protection of Industrial Property, which was passed in 2020, this law extends the exceptions and limitations to patent rights. According to the Institute for the Protection of Intellectual Property and Legal Commerce, a Mexican trade group, counterfeiting and piracy are a $12.5 billion USD a year business in Mexico.
In Panama, on the civil side, Law No. 64 governs copyright and neighboring rights,, while Law No. 35 governs industrial property, including utility models, patents, industrial designs, trade secrets, and trademarks. Additionally, Chapter IV of the Criminal Code of Panama deals with crimes against intellectual property, including copyright, industrial property, and the collective rights of indigenous peoples and their traditional knowledge.
In September and October 1998, the Tenth District Attorney’s Office of Panama, conducted a series of raids at and around the Tocumen Airport which resulted in the seizure of over five million pirate CDs and CD-ROMs, along with pirate and counterfeit items. The seized amounts included 3.5 million, 450,000, 850,000, and 285,000 units, in four separate actions–a conservative estimate of the value of these seized CDs might be US$20 million. In this case, the shipments were sent from Hong Kong, to Taipei, to Los Angeles, and then to Panama, where they were re-packed to continue on to Ciudad del Este, Montevideo, and Buenos Aires, with the final destination being Brazil. As a part of the Challenge case, Colon Free Zone officials decided to revoke the operating licenses to the companies owned by the defendants, and they are now banned from conducting business in the CFZ.
In 2016, the border authorities of Tocumen International Airport seized 9 bundles of clothing bearing counterfeit trademarks of Calvin Klein, Adidas, Niké, Fila, Puma, Gucci, Chanel, Versace, Moschino, Guess, Disney, Kenzo, Tommy Hilfiger, Hugo Boss, Lacoste, Náutica, Ralph Lauren, Balenciaga, CAT, Under Armour, Christian Dior, Michael Kors, among others. On September 6, 2016, 3 different cases of counterfeit clothing were settled with 32 months of incarceration each. In 2019, under Operation Maya III, customs and law enforcement conducted a series of raids and inspections in markets and at borders in several countries in the Americas and Caribbean, including Panama. “[A]round 746,000 items with a total estimated value of more than USD 3.5 million” were seized, though it is not clear how many of these items were linked specifically to Panama. However, as one of its examples, the report does state that 63,000 cigarette packs were confiscated in Panama.
Romania has a relatively solid set of trademark laws and government ordinances. The Unfair Competition Law (11/1991) is focused on the repression of unfair competition and establishes criminal liability and penalties. The Trademark Law (84/1998) addresses trademarks and geographical indications and notes protection of rights of trademarks and geographical indications, as well as criminal liability and penalties.
In October, 2019, 72 pairs of footwear coming in from China were seized by the Romanian Coast Guard and found to be counterfeit, with the goods having an approximate value of 258,485 lei. Additionally, the Romania Customs agency reports recent customs seizures reports in Romania and could be a helpful source of information. The Public Prosecutor in Romania is only likely to send infringement cases to court in more serious instances, such when there is a large number of counterfeit products, the infringer is a repeat offender, or when organized crime is involved. The infringer is rarely sentenced to jail time, and then usually because they are also guilty of other crimes such as tax evasion or endangering public health and safety.
Russia, like the United States, has seen an explosion in counterfeit goods being trafficked and sold both internationally and domestically. Approximately 40% of all handbags, apparel, and accessories sold in Russia are believed to be counterfeit and 30% of Russians admitted to purchasing counterfeit goods in 2017. A 2018 study from Moscow’s Higher School of Economics indicates that total illicit trafficking in consumer markets surpassed 9% of the total retail trade volume in Russia. Geographic challenges have long made the expansion of e-commerce platforms into the most remote regions of the world’s largest country difficult. Not only is Russia large, but a large portion of it is extremely cold and difficult to traverse. In 2019, e-commerce accounted for only 1.4% of Russia’s economy–about half of the amount in the United States during that same period. COVID-19 drastically accelerated the demand for e-commerce providers in the country’s typically underserved regions, and annual online sales are expected to continue growing as distributors follow demand. Given the prominence of counterfeits currently in circulation, their geographic proximity to global counterfeit leaders, and increasing interconnectivity to its most remote regions, an examination of Russia’s trademark regime is essential.
Russia currently provides for civil, administrative, and criminal causes of action against trademark counterfeiters. Criminal cases are governed under Article 180 of the Criminal Code. Additionally, IP enforcements at the numerous international borders are governed by the Customs Code of the Union, the Federal Law on Customs Regulation, and the Administrative Regulations. Russia is also a member of the Eurasian Customs Union (ECU), composed of Belarus, Kazakhstan, Russia, Armenia, and Kyrgyzstan and its purpose is to harmonize member countries’ existing IP and customs regimes. There is evidence of seizures as well in Russia.
Swedish intellectual property is mainly governed by the Trademarks Act, along with additional EU regulations. Chapter 8, article 1 of The Trademarks Act establishes that anyone who intentionally or by gross negligence infringes on a trademark holder’s rights may face up to two years in prison or a fine. Intentionally serious violations are punishable with a minimum of six months up to six years in prison. The article describes several criteria to consider when deciding if trademark infringement constitutes a serious intentional violation. As a member of the EU, Sweden is also subject to EU criminal regulations; however, at this time, no specific criminal trademark EU statues were located. A 2013 case against Christer Skult for counterfeiting ball bearings resulted in him being found guilty of violating the act, fined SEK 600,000 (~$95,000) and sentenced to one year in jail. Further research and time will be needed to locate additional criminal cases within this country.
Two pieces of legislation are relevant in Taiwan’s trademark enforcement regime – the Trademark Act and the Regulations Governing Customs Measures in Protecting the Rights and Interests of Trademarks. Both civil and criminal complaints may be directed to the IP Rights and Commercial Court, which has the ability to hear civil, criminal, and administrative IP cases. The Trademark Act does not contain an explicit notice-and-takedown procedure, but has been read as such when reviewing a provider’s liability for contributory trademark infringement. Preliminary research into this country did not yield any cases of criminal charges being brought forth against defendants; however, we were able to locate cases of product seizures. Over 12,000 pairs of counterfeit glasses were seized by local police after raiding a warehouse for counterfeit goods.
Turkey’s main intellectual property laws are both civil and criminal and include: Law No. 6769 on Industrial Property, Law No. 5846 on Intellectual and Artistic Works (also known as the Copyright Act), the Turkish Commercial Code, and the Turkish Criminal Code.
Considering Turkey is listed as the third largest historical counterfeit and pirated goods economy, following only China and Hong Kong, the government has plenty of opportunities to make seizures of such goods and several criminal arrests. As the country also ranks sixth in exported counterfeit products, it has historically been known as a European hotspot for counterfeit and IP-infringing activity. Initially, the cases’ official names have not been identified; however, reports of the arrests, seizures, and smuggling interceptions were recorded largely from European news outlets, of which spread across the five years since Turkey passed new laws that increased prison terms and fines for counterfeit traders.
Given the proficiency of counterfeiting and product infringement in Turkey and the newly introduced anti-counterfeiting laws, it would be reasonable to assume that criminal prosecution cases and general law enforcement action towards counterfeit prevention would increase. As the details of the cases listed found reveal, the Turkish police have had several largely successful seizures, leading to arrests on multiple fronts, further prosecution details currently remain unknown. However, identification of specific case names, titles, and party details, apart from the information summary attached to the research file, remain currently unknown to us. Overall, pursuing further research would be reasonable as the country of Turkey has a historically high amount of counterfeit and IP-infringement market activity, has strengthened anti-counterfeiting laws in the past five years, and has demonstrated evidence that large amounts of illicit product are still trafficked through, manufactured, and sold in Turkey.
Uruguay has a rich history of IP related law that dates back to at least 1892 according to a legal database maintained by WIPO. Uruguay’s criminal trademark enforcement appears to be primarily through Law No. 17.011 of September 25, 1998, establishing Provisions on Trademarks. Criminal and civil remedies are highlighted in chapter 14 article 81 of the law that sets minimum imprisonments of six months and a maximum of three years. An article translated from Subrayado by Brand Protection News describes the seizure of over 20,000 fake toys from China. It also highlights that several prosecutions related to this seizure took place; however, we were not able to locate these cases within the legal system during our preliminary research. Another 2020 seizure at the Port of Montevideo resulted in over $3.5 million worth of product seizures.
In a related civil case, an Uruguayan civil court judge has ordered a man found guilty of counterfeiting Nintendo games to pay Nintendo $2.5 million in damages and legal expenses. The Court found that the man in question and his three companions were responsible for the sale and distribution of tens of thousands of counterfeit Nintendo products. This investigation began in 2001, when the National Board of Intelligence raided four shops and a warehouse, seizing seven truck loads of bogus Nintendo swag in Montevideo. A principal owner of the locations was identified and charged with trademark counterfeiting, though he was later given an unexplained executive pardon at the criminal trial.
United Arab Emirates
The United Arab Emirates (UAE) has several statutes governing intellectual property, both civil and criminal. The most important of these statutes include Federal Law on Trade Marks (No. 37 of 1992), which is the main statute providing enforcement options for anti-counterfeiting.Federal Law No. 19 deals with combating commercial fraud generally and expands on remedies provided by No. 37. The UAE also has several other established laws that contribute to the prosecution of anti-counterfeiters, including: DIFC IP Law No. 4 of 2019,, Federal Law No. 8 of 2019, Federal No. 3 of 1987 – The Penal Code, and the GCC Unified Customs Law. In the UAE, trademark infringement is usually dealt with via civil actions, or through actions brought before the Ministry of Economy-Trademark Office (TMO) and/or Department of Economic Development (DED).
It was difficult to find specific cases of prosecutions involving these statutes; however, there is evidence of active efforts to deter anti-counterfeiting in the UAE. In addition to the country’s formal criminal complaint process for such issues, a report found that, as of 2018, 25 million counterfeited goods were seized every year in the UAE. The UAE has also worked to crack down on the pandemic-related rise in counterfeiting of certain types of products. The rise in demand for hygiene products, such as face masks, sanitizers and disinfectants has led to a rise in the production and sale of counterfeits of these products. In 2020, the UAE busted nearly 20 factories that were selling these types of counterfeits. Most of the counterfeiters involved were arrested and referred to public prosecutors. Additionally, between 2015 and 2020, the Dubai police had arrested 2,430 suspects and recorded 2,145 cases of economic crimes. Finally, the US has also removed the UAE from its intellectual property rights protection and enforcement watchlist due to such enhanced enforcement procedures.
The key statutes governing intellectual property regulation in the UK include several statutes. The Trade Marks Act 2006 covers trademark infringement and criminal anti-counterfeiting offenses.  The Proceeds of Crime Act 2002 deals with the recovery of assets and proceeds resulting from IP crimes. The Fraud Act 2006 establishes criminal offenses relating to fraud. Finally, there is also the Copyright, Designs and Patents Act 1988, which covers the offense of fraudulently applying or using a trade mark.
In addition to this, the UK has been used as a transit point for counterfeit products headed to other European countries; evidencing the UK’s efforts, Trademark and Rights Holders Against Piracy (TRAP) has reported £2.3 million in physical seizures of counterfeit goods. The country’s Crown Prosecution Service even has a Specialist Fraud Division for larger and more complex IP crime cases. According to the UK’s Ministry of Justice, in 2019, 401 people were found guilty under the Trade Marks Act, and 23 under the Copyright, Designs and Patents Act. However, in 2020 those numbers seemed to go down to 180 and 1 respectively. Additionally, in 2012, a conviction of eight years imprisonment was upheld for a conspiracy to defraud by importing counterfeit medicinal products, which purported to be required for treating serious illnesses. This was done partially to act as a deterrent against such infringements. In R v. Khan, the trial judge had considered deterrence as a factor when sentencing four offenders for a conspiracy to sell counterfeit goods; however, the trial judge’s sentence, which ranged between 12 months and 24 months’ imprisonment, was held to be too excessive.
Another high profile prosecution took place in 2021 against counterfeiters of the Supreme brand, in which father and son were sentenced to 8 and 3 years in prison respectively after facing private prosecution by a New York based company. The City of London Police has also received referrals directly from companies like Apple, which in one case resulted in a company director being sentenced to 28 months’ imprisonment for importing and selling counterfeit Apple and Samsung Batteries. Finally, as recently as October 2021, the UK carried out its “biggest ever police operation against counterfeiting,” resulting in over 200 ton of goods (valued at over £500 million) being seized and two people being arrested.
Since becoming part of numerous multilateral trade treaties at the turn of the century, Vietnam’s IP regime has undergone many changes. The Law on Intellectual Property 2005 and the Penal Code 2015both control the regime in addition to governmental decrees. While the laws are given a higher degree of authority, the decrees are most often referred to as they provide the most detailed information. There is evidence of police seizures of counterfeit goods in Vietnam as well.
Preliminary criminal research into the European Union (EU) consisted of searching the internet to locate criminal cases that were prosecuted in the European General Court or Court of Justice of the European Union (CJEU). Although there is evidence of criminal prosecutions, researchers were not able to locate any criminal cases that made their way through the EU legal system. It is theorized that cases utilizing EU criminal provisions, if they exist, are used in prosecutions in the countries where the crimes took place. Further research should focus on locating counterfeit crimes that happen within European Union countries and identifying if EU criminal provisions exist and are being utilized in those prosecutions.
The search to identify the criminal counterfeit statues of the European Union proved to be just as fruitful as the search for the cases prosecuted using them. Researchers were able to locate a vast pool of civil counterfeit legislation in the European Union. As previously noted, criminal prosecutions have been identified however, they are believed to happen in the country where the crime happened and not at the EU level. The only criminal provision located was proposed regulation 2005/0127/COD; however, this provision was withdrawn from the commission after 5 years. More research will be needed to collect and analyze if there are any EU criminal provisions.
Overall Analysis of Statutes & Prosecutions
While almost every country we examined had criminal anti-counterfeiting legislation in place, there is little evidence of their use. The criminal laws often complement that civil laws in place protecting trademarks and are usually woven into the criminal codes. However, prosecutions are minimal. Any evidence of sentencing that we found was also minimal and appeared to be more along the lines of monetary fines. However, the monetary fines did not appear to be significant. Some countries appear to be slightly more active in their criminal responses, such as the UK or China, but what we cannot tell by this study is how this correlates to the amount of counterfeiting activity and whether the prosecutions, convictions and punishments have any impact on continued counterfeiting.
More evidence exists, at least in the media, of police or customs seizures of counterfeit goods at ports; but often little follow up through the system. While we do not have the statistical capability at this point to claim whether prosecution is an effective deterrent, we can definitely say it is not being used frequently, or at all.
In cases where it is used, we see consistent sentence reductions or minimums. The question we ask if this: while every country’s political/legal system differs, why do each of these countries go through the process of creating legislation and criminalizing it, but consistently do not use it? It appears to cross all barriers of North/South, Developing and Most Developed, with some slight increases in the US and European countries.
Recommendations for Future Research
We suggest that a rigorous, empirically valid study of the effects of product counterfeiting prosecutions is possible but would take on the ground resources in every country we examine, not only to find the laws, which in most cases are readily accessible, but to find evidence of prosecutions from within the domestic courts. Additionally, we recommend interviewing local lawyers, prosecutors, police and customs agents to determine why cases are not brought more often against counterfeiters. This will take time, skilled interviewers, and language skills given each country. We do believe it is possible to undertake this study and to glean more information about prosecuting outcomes or failure to prosecute.
 A special thanks to the research team of Daniel Duquet College of Law 3L, Hassan Hachem College of Law 2L, Ronald Ilagan 2L, Lillie Patterson College of Law 3L, Chandler Wirostek 2L, Paige Barnes James Madison College fourth year undergraduate student, Tori Curtis, graduated 2021 Supply Chain,, and Roderick Bullard Masters of Public Policy second year without whom this research paper could not be possible.
 OECD, Global Trade in Fakes: A Worrying Threat (June 2021)
 OECD, Misuse of E-Commerce for Trade in Commerce (October 2021)
 18 U.S.C. § 2320
 Kari Kammel Esq., Brandon A. Sullivan Ph.D. & Lorryn P. Young, The Crime of Product Counterfeiting: A Legal Analysis of the Usage of State-Level Statutes, 18 Chi.-Kent J. Intell. Prop. 125 (2019).
 Argentina, Bolivia, Brazil, Canada, China, Ecuador, France, Germany, Greece, India, Israel, Italy, Mexico, Panama, Romania, Russia, Sweden, Taiwan, Turkey, United Arab Emirates, Uruguay, United Kingdom, Vietnam, and the European Union.
 Law No. 11.723, 1933 (Argentina). Available at http://servicios.infoleg.gob.ar/infolegInternet/anexos/40000-44999/42755/texact.htm; Mainly a civil statute, but it also provides for the bringing of criminal action.
 Law No. 22.362, 1980 (Argentina). Available at https://wipolex.wipo.int/en/text/520521; Article 32 allows for criminal justice under Book I of the Penal Code “insofar as [the provisions] are compatible with this law.”
 Regulatory Law of Trademarks, 1918 (Bolivia), available at https://wipolex.wipo.int/en/text/198152; Articles 45, 47, and 48 (with a maximum fine of $43 USD for counterfeiting); see also Art. 56 (excluding sellers rom punishment if they tell the court who they bought it from); covering both criminal and civil in the same statute.
 Law No.1322, 1992 (Bolivia), available at https://wipolex.wipo.int/en/text/490871; Title XIV, Chapter I allows for criminal proceedings “to which infringements of this Law give rise shall be judged by the Ordinary Criminal Judiciary, in accordance with the Law on Judicial Organization, the Penal Code, the Code of Penal Procedure, and this Law.”
 Penal Code (Bolivia 2003), Ch. X. Art. 362, Art. 193 (Counterfeiting and Misuse of Trademarks and Passwords), Arts. 235-236 (fraud Tradan and Deception in Industrial Products) available at https://wipolex.wipo.int/en/legislation/details/498
 Criminal Liability For Trademark Infringement: A Collaborative International Study, January 2021, page 22. Available at:
 The Industrial Property Law (9,279/96) (Brazil), available at https://www.wipo.int/edocs/lexdocs/laws/en/br/br003en.pdf
 The Copyright Law (9,610/98) (Brazil), available at https://www.wipo.int/edocs/lexdocs/laws/en/br/br002en.pdf
 The Software Law (9,609/98) (Brazil), available at https://www.wipo.int/edocs/lexdocs/laws/en/br/br001en.pdf
 The Internet Law (12,965/14) (Brazil), available at https://www.cgi.br/pagina/marco-civil-law-of-the-internet-in-brazil/180
 Id. at Sec. X.
 R. v. Strowbridge, 2014 NLCA 4, 2014 CarswellNfld 30 https://www.westlaw.com/Document/If1b2fcade4796676e0440021280d79ee/View/FullText.html?transitionType=Default&contextData=(sc.Default)&VR=3.0&RS=cblt1.0
 https://globalnews.ca/news/8178249/counterfeit-clothes-wasaga-beach-retail/; see also https://ca.finance.yahoo.com/news/how-the-rcmp-is-cracking-down-on-the-rise-of-counterfeit-goods-183553135.html
 Tobacco Monopoly Law of People’s Republic of China, 1991 https://wipolex.wipo.int/en/text/342304; Article 36 brings in the possibility of criminal liability for trademark infringement. For the Tobacco Monopoly Law, Articles 20, 21, 36, and 37 deal specifically with trademarks. Id.
 See supra note 42, 43, and 44.
 Criminal Law of the Peoples’ Republic of China, 1979, Art. 213, 214, and 215, available at https://www.fmprc.gov.cn/ce/cgvienna/eng/dbtyw/jdwt/crimelaw/t209043.htm
 Criminal Liability For Trademark Infringement: A Collaborative International Study, January 2021, pages 38-39. Available at:
 China’s Shanghai Pudong Court Sentences 69 Defendants for Counterfeiting Chanel, Cartier and Gucci Products for up to 5 Years 9 Months with a $1.8 Million USD Fine, XI, No. 337 National Law Review
Saturday, October 23, 2021, available at https://www.natlawreview.com/article/china-s-shanghai-pudong-court-sentences-69-defendants-counterfeiting-chanel-cartier
 Organic Code on the Social Economy of Knowledge, Creativity and Innovation, 2016 (Ecuador), available at https://wipolex.wipo.int/en/legislation/details/16990. Copyright, trademarks, patents, industrial designs, utility models, and more are all covered under this law.
 Id. at art. 235
 Id. at art. 208A
 Criminal Liability For Trademark Infringement: A Collaborative International Study, January 2021, page 54. Available at:
 Designgesetz [DesignG] [Design Act], Mar. 12, 2004, as amended (Ger.). https://wipolex.wipo.int/en/text/461321; Section 51 covers penal provisions generally, while Section 65 deals specifically with criminal infringement of a community design
 Gesetz gegen den unlauteren Wettbewerb [UWG] [Act Against Unfair Competition], July 3, 2004, as amended (Ger.). https://wipolex.wipo.int/en/text/462506; Chapter 4 deals in part with criminal provisions
 Gesetz zum Schutz von Geschäftsgeheimnissen [GeschGehG] [Trade Secrets Act], Apr. 18, 2019 (Ger.). https://www.gesetze-im-internet.de/geschgehg/BJNR046610019.html; penal provisions can be found in Section 4
 https://www.therecycler.com/posts/hp-seizes-counterfeit-products-in-germany/; see also https://www.stimme.de/polizei/heilbronn/markenfaelschungen-in-angeblichen-geschenksendungen;art1491,4518461; https://www-textilwirtschaft-de.translate.goog/business/news/zWEI-230606?crefresh=1&_x_tr_sl=de&_x_tr_tl=en&_x_tr_hl=en&_x_tr_pto=nui,sc
 Trademark Law 4679/2020 (Greece), available at https://wipolex.wipo.int/en/legislation/details/20068; criminal provisions in Article 45
 Law 2121/1993 (Greece), available at https://wipolex.wipo.int/en/legislation/details/18205; criminal sanctions in Article 66
 Unfair Competition Law 146/1914 (Greece), available at https://wipolex.wipo.int/en/legislation/details/9769; includes criminal penalties
 Law 4619/2019 “Penal Code” (Greece), available at https://www.e-nomothesia.gr/kat-kodikes-nomothesias/nomos-4619-2019-phek-95a-11-6-2019.html
 Law 4620/2019 “Code of Criminal Procedure” (Greece), available at https://www.e-nomothesia.gr/kat-kodikes-nomothesias/nomos-4620-2019-phek-96a-11-6-2019.html
 Trademarks Act, 1999 (India) https://www.indiacode.nic.in/handle/123456789/1993?locale=en; provides both civil and criminal statutory remedies
 Copyright Act, 1957 (India) https://wipolex.wipo.int/en/legislation/details/15814; Chapter XIII deals with criminal offenses and penalties
 The Geographical Indications of Goods (Registration and Protection) Act, 1999 (India), available at https://wipolex.wipo.int/en/legislation/details/2399; provides for both civil and criminal remedies
 Drugs and Cosmetics Act, 1940 (India), available at https://legislative.gov.in/sites/default/files/A1940-23.pdf; includes criminal penalties for offenses
 Food Safety and Standards Act, 2006 (India), available at https://fssai.gov.in/upload/uploadfiles/files/FOOD-ACT.pdf; includes criminal procedures and punishments
 Information Technology Act, 2000 (India), available at https://wipolex.wipo.int/en/legislation/details/6827; Chapter XI deals with offenses and criminal penalties
 Customs Act, 1962 (India), Chapter IV, available at https://wipolex.wipo.int/en/legislation/details/7666; Chapter XVI deals with offenses and prosecution
 Indian Penal Code, 1860, available at https://wipolex.wipo.int/en/legislation/details/7668
 Code of Criminal Procedure, 1973 (India), Chapter XVIII, available at https://wipolex.wipo.int/en/legislation/details/8578
 M S Mont Blanc Simplo GMBH v. Gaurav Bhatia, LNINDORD 2018 DEL 817
 https://www-timesnowhindi-com.translate.goog/crime/article/those-selling-fake-watches-of-expensive-brands-busted-mumbai-police-took-action/361933?_x_tr_sl=auto&_x_tr_tl=en&_x_tr_hl=en-US&_x_tr_pto=nui; see also https://www-aajtak-in.translate.goog/crime/police-and-intelligence/story/sukesh-chandrasekhar-with-wife-leena-maria-paul-questioned-by-enforcement-directorate-ntc-1339130-2021-10-09?_x_tr_sl=auto&_x_tr_tl=en&_x_tr_hl=en-US&_x_tr_pto=nui;
 Merchandise Marks Ordinance, 1929 (Israel), available at https://wipolex-res.wipo.int/edocs/lexdocs/laws/en/il/il009en.pdf
 The Protection Of Intellectual Property Rights In Israel; A Survey Of Legislation, The Court System, Enforcement And Public Awareness Programs, 2004, available at https://www.wipo.int/edocs/mdocs/enforcement/en/wipo_ace_2/wipo_ace_2_12.pdf
 Code of Industrial Property, 2005 (Italy), available at https://wipolex.wipo.int/en/legislation/details/19852; Article 127 deals in part with criminal sanctions
 Criminal Code, 1930 (Italy), available at https://www.altalex.com/documents/codici-altalex/2014/10/30/codice-penale
 Supra note 110.
 Id. Art. 473, 474, 517, 623, and 648.
 Federal Law for the Protection of Industrial Property, 2020 (Mexico).
 Unfair Competition Law (11/1991) (Romania), available at https://www.uaipit.com/uploads/legislacion/files/1352887941_19._Law_No._11_of_January_29,_1991_on_the_Repression_of_Unfair_Competition_EN.pdf; establishes criminal liability and penalties
 Trademark Law (84/1998) (Romania), available at https://wipolex.wipo.int/en/legislation/details/20127; establishes criminal penalties
 Criminal Liability For Trademark Infringement: A Collaborative International Study, January 2021, pages 185-186. Available at:
 https://samara-aif-ru.translate.goog/society/obuv_pod_markami_adidas_i_nike_okazalas_kontrafaktnoy?_x_tr_sl=auto&_x_tr_tl=en&_x_tr_hl=en-US&_x_tr_pto=nui; https://trkterra-ru.translate.goog/news/accident/news-rus/v-samarskoj-oblasti-zaderzhali-10-tysyach-poddelnykh-futbolok-i-kepok-adidas-i-nike?_x_tr_sl=auto&_x_tr_tl=en&_x_tr_hl=en-US&_x_tr_pto=nui;
 Trademarks Act, 2010 (Sweden), available at https://wipolex.wipo.int/en/legislation/details/20593; Chapter 8 covers criminal liability
 https://law.moj.gov.tw/ENG/LawClass/LawAll.aspx?pcode=J0070001; Chapter IV covers penal provisions
 Law No. 6769 on Industrial Property, 2016 (Turkey), available at https://wipolex.wipo.int/en/legislation/details/16609; Section 6 deals with infringement of trademark rights, including penal provisions
 Law No. 5846 on Intellectual and Artistic Works, 1951 (Turkey), available at https://en.unesco.org/sites/default/files/turkey_lawintellectualartisticwork_entof.pdf; Part 5, Section B deals with criminal actions and prosecution
 Law No. 6102 “Turkish Commercial Code”, 2011, available at https://wipolex.wipo.int/en/legislation/details/11081
 Law No. 5237 “Turkish Criminal Code”, 2004, available at https://wipolex.wipo.int/en/legislation/details/15936
 Law No. 17.011 of September 25, 1998, establishing Provisions on Trademark, available at https://wipolex.wipo.int/en/text/130087
 Federal Law No. 19: On Combating Commercial Fraud, 2016 (UAE), available at https://elaws.moj.gov.ae/UAE-MOJ_LC-En/00_COMMERCE/UAE-LC-En_2016-12-12_00019_Kait.html?val=EL1&Words=counterfeit#Anchor165
 Criminal Liability For Trademark Infringement: A Collaborative International Study, January 2021, page 241. Available at:
 https://www.worldtrademarkreview.com/uae-counterfeit-seizures-brazil-predicted-2019-madrid-accession-and-lacoste-scores-big-win-news; see also https://www.mondaq.com/trademark/1097430/ajman-police-seized-counterfeit-goods-worth-an-estimated-aed-30-million-approximately-usd-8167721
 R. v Gillespie (Peter Hugh),  2 Cr. App. R. (S.) 24.
 R. v Khan (Yasar),  EWCA Crim 802.
 https://kinhtedothi-vn.translate.goog/dot-kich-2-kho-hang-san-xuat-tang-tru-san-pham-gia-mao-nhan-hieu-thuan-phat-440757.html?_x_tr_sl=auto&_x_tr_tl=en&_x_tr_hl=en-US&_x_tr_pto=nui; https://tuoitre-vn.translate.goog/dua-chat-cam-vao-thuoc-bao-ve-thuc-vat-lam-gia-bao-bi-y-chang-20211108231507241.htm?_x_tr_sl=auto&_x_tr_tl=en&_x_tr_hl=en-US&_x_tr_pto=nui