5 minute read
We don't just file trade mark applications -
We don’t just file trade mark applications-
how a Trade Mark Attorney can help with anti-counterfeiting strategy
The counterfeit goods industry is estimated to be worth an eye-watering US$600 billion a year. It is thought that as many as 10% of all branded goods sold may be counterfeit, with 80% of us having (knowingly or not) handled fake goods.
With figures this high, it is odd that until the last 6-7 years of my 20+ year career as a Trade Mark Attorney I hadn’t had much involvement in anti-counterfeiting. But with new clients and new challenges it has been a focus of my practice over the past few years.
It’s a lesser-known part of our job, different from the usual trade mark prosecution and dispute matters that make up the majority of our day-to-day work. But it’s an important, and fascinating, aspect of our role. My work in this area for a skincare client, with the help of the City of London Police’s IP Crime Unit (PIPCU) recently brought two counterfeiters to criminal conviction.
Online sales account for an increasingly large proportion of the figures above, the development of digital technologies, evolution of freight systems and globalised banking systems all playing their part.
Counterfeiters operate in all markets, from consumer goods (everyday items as well as luxury) to pharmaceuticals, industrial components and automotive parts. Protecting brands against offline and online fakes is a huge challenge, but not doing so can negatively and immeasurably impact brands. Almost 40% of fake goods detained at EU borders have been found to be dangerous to consumers; think of the dangers of fake airbags in cars, or fake skincare products you might apply to a baby’s skin. Harmful or poor-quality goods also stand to damage the reputation brands have worked hard to build, and sales of unauthorised goods divert sales, leading to a reduction in profits.
There’s also a wider impact; lost sales due to counterfeiting means billions in lost taxes, as well as job losses. Counterfeit goods are linked with organised crime, with the purchase of counterfeit goods funding crimes like money laundering and illicit drug distribution.
I’ve seen brands take a zero-tolerance approach to counterfeits, while others turn a blind eye. In some cases brands feel it’s too costly to pursue every instance of unauthorised goods they find. In others, they appear to want to avoid the publicity that prosecuting the counterfeiters may invite. Unfortunately, not tackling counterfeiting head-on allows it to continue to grow year on year.
Even if a brand doesn’t have a big budget, there are simple, cost-effective measures they can take to monitor and address counterfeits. Every counterfeit item taken off the market is a step in the right direction.
Here are some examples of accessible measures brands can start with:
Monitor and authenticate
Specialist companies offer a range of monitoring and authentication options enabling companies to monitor sales or listings, and allowing consumers to authenticate products once they are purchased.
Register brands with rights owners’ programmes offered by online marketplaces
Two of the major programmes are Amazon’s Brand Registry and eBay’s Verified Rights Owner (VeRO) programme. Platforms will usually suspend listings whilst the suspected counterfeits are investigated.
Check consumers’ comments and reviews for reports of fake products
This can be a quick and easy way of flagging suspected counterfeit goods. Consumers often leave negative feedback if they believe they have received a counterfeit product or if a products is sub-standard.
Make test purchases and send ‘cease and desist’ letters
If products look suspicious, they can be purchased, tested and, if found to be counterfeit, used in further action against the counterfeiter. Letters before action can stop counterfeiters quickly, particularly smaller sellers. They can also be used to extract key supply chain information enabling further investigation. Private investigators can be used to make discreet purchases or approaches to counterfeiters.
File Applications for Action (AFAs) with Customs authorities
This can be done in most countries and is the most effective way to support local Customs authorities to seize suspect goods as they enter the country.
Civil or criminal proceedings
If trade marks or images of a company’s products are used by counterfeiters, consider civil court proceedings which offer remedies such as injunctions, damages, an account of profits and delivery-up and destruction of infringing products. Criminal proceedings are also available. I work with various organisations including the UK National Crime Agency (NCA) and PIPCU, particularly in cases involving a threat to consumer health and safety.
Trading Standards
Reports can be lodged at local Trading Standards offices. These authorities have the power to seize and investigate reports of counterfeit or infringing goods.
Educate consumers
Consumer awareness can be crucial to minimising counterfeits. If consumers can readily detect a fake product or know how to report or verify one, this can be a first line of defence. It also protects them from potentially harmful products. Providing details on company websites on how to spot and report counterfeits is usual these days and shows a brand’s engagement with the issue.
