CE0123: fighting counterfeiters
In 2017, TÜV SÜD’s well-known “CE0123” certification mark became a protected EU trademark. TÜV SÜD uses the trademark law to combat counterfeiting and product piracy: Annette Dorfner, Attorney at Law at TÜV SÜD Product Service, explains why the CE marking now protects original products even more effectively.
By affixing the CE marking on products, manufacturers confirm that their products fulfill all product-specific EU directives on safety and functionality, and that they have carried out and documented a conformity assessment procedure to prove compliance. A CE marking followed by a four-digit identification number indicates that a Notified Body was involved in conformity assessment. CE 0123 shows that TÜV SÜD was the Notified Body involved in conformity assessment.
Many consumers take the CE marking as a sign that a product is in conformity with the relevant directives. For the industrial sector, CE marking is the “visa” for the EU single market, because many products must have CE marking before they can be placed and sold on the EU market. Given this, repeated discoveries of misuse of CE marking and fake CE marking are not surprising. The financial losses incurred by industry, but also—and primarily—the health and safety risks faced by the users of potentially unsafe products are incalculable.
Ms. Dorfner, you’re using a trademark as a weapon against unscrupulous product pirates and counterfeiters. But can this really be effective?
Trademark law offers highly effective protection in both cases. Similarly to legal products, the value of counterfeit products also rises in step with their public profile and the reputation of the trademarks shown on the product. However, many counterfeit products are “all show and no substance.” In this case, violations of trademark law are far easier to prove than design or patent violations, for example, where the actual counterfeit item must always be handled, opened if necessary, and compared to the real thing. Regarding the protection of our TÜV SÜD word and design marks, we have seen for quite some time that this point of attack is highly successful when it comes to identifying counterfeits and withdrawing them from circulation. We have had around 685,300 counterfeit products removed from markets worldwide since 2009.
Unauthorized use of the CE 0123 marking has always been prohibited and prosecutable. Yet in the past, all we could do was to bring violations to the notice of the market supervisory authority and then wait and see when and how they would react. However, these authorities handle many areas of responsibility, and frequently had completely different and more urgent problems to deal with. Now trademark law enables us, as the trademark holder, to take action into our own hands and have control over the procedure. Another advantage is that where market supervisory authorities might take different approaches at regional level, EU law is standardized and thus relies on the same instruments and procedures worldwide. Since we registered our trademark, we have prosecuted all violations using the instruments of trademark law. In concrete terms this means that we no longer have to act through regional authorities, but can file claims directly—such as claims for an injunction to put a stop to the violation, claims for damages, or claims for destruction of counterfeit products. This is a valuable advantage, which enables us to protect the good reputation of our services and our customers’ brands but also–and more importantly—keep consumers safe from potentially hazardous products.
How do you proceed if you become aware of a violation?
Well, we naturally prefer to play our cards close to the chest. However, the legal steps are clear: If we identify a suspicious CE 0123 marking, we first look into the matter in-house. If necessary, we may then send an authorization inquiry to the party that places the product on the market. If they are unable to prove that they are authorized to use our trademark, we will order them to stop the violation immediately or, in case of repeated violations, demand the payment of penalties. If the respective party does not comply with our request, we immediately launch legal proceedings. From that step onward, things get expensive and highly uncomfortable for those in charge, who may even face long prison sentences. In the meantime, the counterfeit products are removed from the market and destroyed. At that stage, everything happens really quickly. We are very determined about taking action against counterfeits and counterfeiters!
How are counterfeit products or misuses of CE marking exposed?
This very much differs from case to case. Time and again, we are informed by consumers who immediately notice if a product has a quality label but looks, let’s say, a little shoddy. In this case, many consumers start to research in our certificate database on the Internet and contact us for further inquiries.
Our team also goes “counterfeit hunting” at trade fairs, and works closely with our clients in industry and the police or customs officials. Collaboration between the various trademark holders also plays a significant role in this context. Let’s assume we find a product with an established trademark violation at a trade fair booth, and the product boasts our and other well-known trademarks. In this case, we will of course inform the relevant colleagues and involve them in the proceedings. Thankfully, this close collaboration between manufacturers, trademark owners, Notified Bodies, and authorities, including the police, customs officers and district attorney offices, is highly efficient and functions excellently throughout the EU. The net is drawing closer around product pirates.
What are the most frequent violations?
Among the products preferred by counterfeiters are class III medical devices with a fake CE marking affixed. This is particularly shocking as class III medical devices are high-risk products. Unfortunately, products with fake CE 0123 marking—which suggest testing has been performed by TÜV SÜD even though we had nothing to do with these products—are also not uncommon. In the case of medical devices in particular, fake CE markings not only damage our good reputation, but also have a negative effect on the market in general by simulating valid certification. The reasons, or perhaps better the excuses, for the unauthorized use of our trademarks are varied and very creative. Some violators are simply unaware of the significance of legal regulations. Others want to “jazz up” their websites and “decorate” them with our logo. We discover misuse on products, advertising banners, and even business cards. The possibilities of conscious or unconscious trademark misuse are so varied that we always need to look very closely and stay vigilant.
Which products actually require CE marking?
A host of technical, electrical, and medical devices, systems, in-vitro diagnostics, and toys need to have the CE marking affixed before they can be sold on the EU market. For medical devices, personal protection equipment, and some other products, conformity assessment must be carried out by a Notified Body. Depending on the directive, conformity assessment may comprise product testing and factory inspection, or only an audit of the manufacturer’s quality management system. On these products, the CE marking must be followed by the identification number of the Notified Body.
How do I identify misuse?
Depending on the circumstances, this can be quite complex. After all, nowadays counterfeiters can simply download the files they need from the Internet. However, in some instances fake CE markings are very obvious, perhaps because the proportions are distorted or because they are not affixed to all elements as set forth in the regulations, such as the product itself, the packaging and the documentation. Another important indicator for recognizing counterfeit products is the purchase price. Prices that are too good to be true indicate the possibility of a counterfeit product!
What can I do if I suspect foul play?
Here, the possibilities are many and varied. If product advertising mentions TÜV SÜD certification, anybody can search the certificate explorer on our website, verifying certificate validity and the certification scope. If there is no valid certificate or if consumers suspect the product is counterfeit, in spite of its valid certificate, they can contact the market supervisory authority, the consumer protection authority, or the Notified Body directly. In our case, consumers can send an email to email@example.com.
If our clients suspect products sold on the market, or even come across counterfeits of their own products which, to cap it all, are identified by their own products’ certificates, they can always contact their client advisor, who will then establish contact with us.