6 minute read
The Adventures of the Intellectual Property World!
The Adventures of the Intellectual Property World!
The Red Tube Man
One of the inevitable issues that successful Brand Owning clients face is the presence of counterfeits in their marketplace at some point. Nevermind the second half of the full Oscar Wilde quotation “Imitation is the sincerest form of flattery that mediocrity can pay to greatness,” instead consider the lost sales, reputational damage from inferior quality, or even direct harm to consumers, the lack of return from R&D investment, the untaxed shadow-economy and the criminal gangs much of this trade supports as they launder money from other activities including drugs and trafficking. It can be very serious stuff below the surface.
In most cases, you will need two main things as a precursor to stamp this out, whichever method or jurisdiction is involved. The first is an example of the fake, and the second is a receipt to prove it was sold by that seller (bearing good solid time, date, location & identity information, and ideally referring to the fake by name).
Behind those basics, a raft of other things may also be needed depending on the type of action being taken. For a takedown notice from a reputable platform, you might not even need a purchase as a screenshot will do, for a Cease & Desist with Undertakings and further investigations into the supply chain perhaps all the way to the manufacturer, that is only the start. Sometimes, if the value to the client is very large and they need to find the factory, we will typically develop a small repeat purchasing relationship with the highest point in the chain, leading to a tracked product return in due course. We always mimic the typical customer profile and payment method that that trader would normally deal with, including perceived nationality and location (phone dial code, .suffix of email, and geo-specific social media) so they will trade easily with us. Surveillance is an option sometimes, but this is expensive because of the time it can take and is open-ended unless we already have delivery information from, for instance, placing an advance order against a pushed-for delivery date.
In a UK retail outlet buying the sample with a receipt can range from simple, to Pop-Up-Shop hard. Then there are street markets, online sellers on platforms and those in closed-user groups, or only on social media Apps, plus non-English language sites from anywhere in the world selling into the UK, and so on. It is not an endless list, but it is long and ever evolving.
Here are a few real issues to be aware of so that you or your client can get the ball rolling.
Well-established street markets have WhatsApp groups. It is useful if there are thieves about or just to know if their café is closing early. Most punters don’t ask for a receipt from a market, some do of course, but not after they’ve asked a host of other things. The Grand Bazaar in Istanbul gave us a good example of how this can act as a trigger to expose evidence gathering. An expensive and convincing copy of a designer bag was being sold by around 20 sellers there. The Brand first sent a local lawyer in to collect evidence. He asked the first stallholder he found with the bags on show if the bags were popular, if they sold well, if they had the full range of sizes, had any branded accessories, how long had they been selling them for and so on, and then bought one and asked for a receipt.
The trader noticed the customer did not fit the usual pattern so surreptitiously took a picture of him and posted it to their group (1000+ members) saying that this man had just bought the handbag for his wife but was nosey and didn’t haggle enough. The lawyer engaged a second seller several hundred meters away a few minutes later saying he wanted a bag for his wife, but this time the sale was refused “display only” and he was turned away. All the traders throughout the Bazar removed these bags from view within seconds of the next WhatsApp confirming their suspicions from this second stallholder. On top of that, the lawyer was followed back to his office unaware that he had been exposed and in the belief that there were hardly any sellers doing this at the market, so it was a small problem. As more reports and complaints from customers about these fakes reignited the Brand’s interest in the coming months, the matter was passed to us. First, we did a simple “only looking” mapping exercise of all the stalls involved before selecting two key cascade stockists to focus on, gathering evidence and samples from it, and then raiding while only serving warning letters on the rest. It was effective and shut down the problem because the small sellers saw the biggest ones had lost stock that they had paid for and didn’t want to be next. The makers of the counterfeit themselves too realised the brand was coming for them and most probably switched to copy another name. The main thing is that it stopped.
In UK market towns with registered pitches, we use a ploy to get from the stallholder to their supplier that normally works and cuts through time-consuming costly alternatives. A pair of us look for the most well-established marketeer selling the item, preferably reputable with a long history at the market, and one of us will buy some of the fakes from them and briefly retreat. Next two of us go back to him a few minutes later and quietly explain that we represent the Brand Owner of the items he has just sold to us and that we have filmed evidence of him selling fakes but that we don’t want to waste time going through the legal process with him, or the market’s authorities with the other stalls involved, as our aim is to only to stop those distributing it, rather than the small-scale sellers. Instead of taking this further, if he will tell us his supplier, his involvement will be over and kept confidential. It mostly works.
So often the trail up the chain from the seller to the maker encounters a P.O. Box or other multiple business mail drop address. A fast method to uncover the user can be to send them an electronic tracker, but this must be legally acceptable under all the circumstances of the case and might also alert them when it is unpacked. A softer, easier trick is to deliver an unusually shaped parcel for them that we can easily identify from a distance. We needed to know the true identity of a high-volume electronic games seller using a mailbox address. Around 300 other businesses were using the same address, that had a receptionist, so it would have been hopeless to wait inside the building to try and intercept Box 262. The boxes themselves were not visible from the public area. We sent them a meter-long red tube containing electronic game posters and waited outside for the Red Tube Man to lead us back to his true trading address.
