THE BULGARIAN FIGHT AGAINST COUNTERFEITS – IS IT GENUINE OR IS IT ITSELF A COUNTERFEIT ?

The relationship between trade, counterfeits and legal defense resemble the link between an organism, an illness and its cure. This is a reactive and adaptive chain where the illness (the counterfeits) adapt and implant themselves into the organism (the trade) and the cure (the legal remedy) adapts itself to the respective virus (the specific counterfeit). All three elements are in a constant development and in a mutual chase. As if the first one (the legal trade by marks) and the third one (the legal defense) are doomed to victory because they enjoy the state enforcement against the middle unit- the counterfeits. Unfortunately this is a skin-deep assumption for the balance of forces which does not consider the consumer’s motives to hand out for a counterfeit.

The myth of the mislead buyer who confused the cheap counterfeit for the expensive original cannot explain an estimated annual trade with counterfeits for more than $ 500 bln. Have all those buyers been confused and mislead by the identical or similar mark on unauthentic goods and cannot see the difference or do not know from where to buy the secure original ? The answer is too obvious and bitter : they do it by free will, with the clear mind that they buy just the low quality copy of a famous brand and from an unknown producer.

A key for understanding it is the high price of the original and the low price of the copy. While the mark on the authentic goods is a message to the buyer for an acknowledged origin and high quality, the same mark on the counterfeit is a message by its buyer to those around that he/she can afford the price of the original. A counterfeit Rolex on the arm or a false “Davidoff” on the table misleads not the one who carries or smokes them but those who watch and envy him.

The intentional purchase of a counterfeit is a conscious simulation of a life standard, a solidarity in fiction between the counterfeit’s producer and its willing consumer against the expensive supplier of the original and its rich buyer. In this way the sale of counterfeits turns out to be a desired adultery between the thief of another’s mark and his vain client- a sin which not only hurts the brand owner but also teases the club of his solvent consumers. Seen from that aspect, the extermination of counterfeits is an utopia and a panacea against this epidemic is hardly possible. The realistic task is to push down its market share to an acceptable minimum which does not jeopardize the competition among branded goods.

The top urgent legislative priorities to this modest end are as follows :

First : Production of counterfeits to be lawfully banned and to become a major case for civil, administrative and criminal liability. Not only trade and storage of counterfeits.

Second : Criminal liability should be introduced for similar and imitating signs, not only for identical ones.

Third : Counterfeits arrested within criminal proceedings should be destroyed by preliminary/police investigation authorities, in analogy with destruction of drugs under art.108 (5) Criminal procedure code, and only samples evidence should be preserved for court purposes.

Fourth : Transit immunity of counterfeits must be expressly abolished. In addition, declaring the primary origin should become a mandatory condition for granting a transit customs status to a consignment.

Fifth : Administrative liability under art. 81 Marks law should be extended to breaches of marks for services and sanctions “closure of shops” and “company striking off” should be introduced as an alternative to the witnessed destruction of counterfeits breaching marks for goods.

Sixth : though not being a mark’s breach, Bulgaria should restore a civil action remedy against the unlawful registration by court of a company name without the consent of its first holder. Duplication of a famous company name to invalidate the entity’s court registration.

06.02.2004 - Braykov’s Legal Office

Valentin Braykov