Counterfeiting remains a critical threat to the integrity of intellectual property rights, impacting not only brand owners but also consumer safety and market trust. The publication of the new counterfeiting study by EUIPO and the OECD, notably involving complex product sectors such as pharmaceuticals and cosmetics, underscores evolving challenges. These sectors illustrate the legal and practical intricacies where product categorization, consumer perception, and regulatory frameworks converge to shape enforcement outcomes.

This article offers a detailed, professional analysis of the latest trends in counterfeiting, focusing on the European Union’s legal regime, recent case-law insights, and pragmatic enforcement strategies. Our aim is to equip clients with an in-depth understanding and effective tools to anticipate and counteract these sophisticated infringements.

I – Legal framework governing counterfeiting in the European Union

EU trademark regulation and anti-counterfeiting measures

The cornerstone of anti-counterfeiting law within the EU is the European Union Trade Mark Regulation (EUTMR). Article 8(1)(b) explicitly prohibits the registration of trademarks when the goods or services are similar enough to cause likelihood of confusion among consumers, including associative confusion. This principle forms the legal basis for challenging infringing marks that underpin counterfeit products.

In addition to the EUTMR, Directive 2001/83/EC and Regulation (EC) No 1223/2009 delineate the scopes of pharmaceuticals and cosmetics respectively, influencing the classification and legal treatment of counterfeit goods within these sectors. The legal overlap necessitates nuanced analyses, particularly when goods straddle both classifications.

Complementary legal instruments against counterfeiting

Beyond trademark law, the EU employs a multi-layered approach including customs enforcement (Regulation (EU) No 608/2013), criminal sanctions, and civil remedies. These legal tools work synergistically to prevent the importation, distribution, and sale of counterfeit goods, ensuring brand protection and consumer safety.

II – Challenges and specificities of counterfeiting in pharmaceuticals and cosmetics

Similarities and conflicts between pharmaceuticals and cosmetics in trademark law

Recent case-law and Board of Appeal reports emphasize the blurred lines between pharmaceuticals and cosmetics, especially in skin and hair care products. The degree of similarity between these categories affects the assessment of trademark conflicts and counterfeiting claims.

  • Pharmaceuticals: Medicinal products intended to treat or prevent diseases, regulated under Directive 2001/83/EC.
  • Cosmetics: Products intended mainly for cleaning, perfuming, protecting or altering the appearance of the human body, as defined by Regulation (EC) No 1223/2009.

The case-law consistently finds low to average degrees of similarity between these categories depending on product specifics, distribution channels, and intended purposes, complicating the enforcement against counterfeiting when product categories overlap.

Case-law developments addressing counterfeiting in overlapping sectors

Notable judgments (see below) highlight the common distribution channels (pharmacies, specialized shops) and overlapping target consumers, which create conditions conducive to confusion and potential counterfeiting. Courts recognize the evolving nature of products, such as cosmeceuticals, which combine pharmaceutical and cosmetic attributes, further intensifying enforcement challenges:

III – Enforcement mechanisms and practical responses to counterfeiting

Customs and border measures

The EU’s customs regulations empower border authorities to seize counterfeit goods upon importation or exportation. This preventive measure is vital for intercepting counterfeit pharmaceuticals and cosmetics that pose serious health and safety risks.

Judicial remedies and damages

Right holders can initiate civil and criminal proceedings against counterfeiters, seeking injunctions, damages, and destruction orders. Recent jurisprudence stresses the need for robust evidence on similarity, consumer confusion, and commercial origin to succeed in litigation.

Conclusion: Strategic IP protection against new counterfeiting threats

In light of newly published counterfeiting study, it is imperative for rights holders to adopt proactive strategies, including comprehensive trademark registrations across relevant classes, vigilant market surveillance, and swift enforcement actions. Recognizing the nuanced interplay between pharmaceuticals and cosmetics can substantially enhance the effectiveness of anti-counterfeiting efforts.

The Dreyfus Law Firm stands ready to assist clients in navigating these complexities, delivering tailored advice and enforcement support across the full spectrum of intellectual property protection.

The law firm Dreyfus et Associés is partnered with a global network of lawyers specializing in Intellectual Property.

Nathalie Dreyfus with the support of the entire team at the Dreyfus firm 

FAQ

1. What defines a counterfeit product under EU law?

A counterfeit product unlawfully bears a trademark identical or confusingly similar to a registered trademark, misleading consumers about the product’s origin.

2. How does the EU distinguish between pharmaceuticals and cosmetics?

Pharmaceuticals are regulated medicinal products for treatment or prevention of diseases, while cosmetics primarily serve aesthetic and hygiene purposes, as defined by specific EU directives and regulations.

3. Can pharmaceuticals and cosmetics be considered similar in trademark disputes?

Yes, depending on product nature, purpose, and distribution channels, courts often find low to average similarity affecting likelihood of confusion in trademark conflicts.