Article written by Imane Nacer – Senior IP Consultant & Associate at H&H IP LAW
Counterfeiting creates public health, fiscal and societal problems. Morocco as other countries in the world, provide effective IP enforcement measures to fight the scourge of counterfeiting, to enable effective implementation of the IP laws through customs, police, and judicial authorities.
While it should be noted that the main economic sectors affected by counterfeiting in Morocco are textiles, leather, electrical, automotive spare parts, and cosmetics. The main regions affected are those of Casablanca, Tanger-Tetouan, Oujda-Nador, Agadir and Marrakech.
The means of prevention and repression of counterfeiting, such as presented below, can be requested from the various public actors concerned by the fight against counterfeiting in Morocco, namely: the Moroccan Office of Industrial and Commercial Property (OMPIC), the Administration of Customs and Indirect Taxes (ADII), the Directorate General of National Security (DGSN), the Royal Gendarmerie (GR) and the Ministry of Justice and Freedoms.
1.Protection through the customs authorities
In the scope of the continuous efforts to create competent border enforcement measures and to provide effective protection, the Customs in Morocco have established a trademark recordation system for registered trademarks – which are registered with the Moroccan Trademark Office –, this system is undoubtedly help Customs officials target, intercept, and confiscate shipments of infringing goods.
The Customs requirements include mainly, a legalised and notarised PoA, list of brand owner’s authorised importers/exporters, a guide detailing the difference between counterfeit and genuine goods for the Customs officer easy detection, while trademark true copies, can be obtained by the representative directly from the TMO in Morocco.
The remedies imposed include fines, seizures and destruction of counterfeit goods, and infringers can also be required to pay the cost of warehousing counterfeit goods. To merit the awards just stated, after receipt of Customs notification, informing the brand owner or his representative in Morocco, civil proceedings have to be initiated through filing a seizure petition before the court, which issues a ruling ordering a bailiff of justice to move to the Customs Authorities premises, to obtain officially details on the shipment, including among others quantity and sample of the detained goods. A report is established by the bailiff in this regard, which is the legal ground for filing the civil claims.
It is worth noting, that to ease the proceedings the Customs collaborate with the right holders or their representative by allowing and before initiating the civil proceedings via bailiff, to take pictures of the detained goods, if the same will be confirmed by the right holder to be genuine the goods will be released with undertaking any legal proceedings, however, if the same are counterfeit the above proceedings have to be undertaken, to cease the entry of the goods in the Moroccan market, or eventually their export.
In addition to this, brand owners are advised to conduct yearly trainings to the customs officers to familiarize them with the originals and typical counterfeits.
On a separate note, Customs recordation is restricted to only goods bearing trademarks, while other IP titles such as Industrial Designs, patents can be defended through other means of defense.
2. Protection through penal measures
If counterfeit goods are detected, criminal complaints through the public prosecution must be filed. The matter will be investigated (usually via Royal Gendarmerie or police); raids carried out and, if substantiated, the case will be transferred to the criminal court.
Once the case is filed and the Police/Royal Gendarmerie report (Proces-verbal), is transferred to the Public Prosecutor, civil claims on behalf of the civil party can be submitted.
The criminal court can issue fines and even jail sentences, order the confiscation and destruction of the infringing goods and the publication of the decision at the infringer’s expense. The remedies and their extent find their positive law basis in the Moroccan Trademark Law (NO. 17-97 on the protection of Industrial Property and Criminal Code of Morocco).
3. Protection through Civil measures
A further option for brand owners ¬¬– mostly adopted in view of its smoothness – is to file a case, against the offender if for example detected in the market to be dealing with counterfeit/infringing goods, before the civil court via a sworn bailiff of justice, as guaranteed in the Moroccan Trademark Law (NO. 17-97 on the protection of Industrial Property). The civil proceedings start via filing a seizure petition before president of the court in the city where the offender is domiciled, who shall issue a ruling ordering a sworn bailiff of justice to move to the premises of the trader, in order to proceed with a seizure of the counterfeit goods detected, to obtain officially among other details of the trader, as well as a physical sample of the counterfeit goods.
Based on his visit, the bailiff establishes his affidavit including the information obtained plus photos of the seized goods, subsequent to the same, an introductory petition must be filed before the Tribunal of Commerce, in 30 days starting from the bailiff visit date to the trader store, requesting among others monetary damages and the destruction of the counterfeit goods at the offender’s cost.
H&H IP Law is available to provide further advice and assistance. If you are interested in discussing our services, please contact us.