Is your anti-counterfeiting strategy up to scratch?

Counterfeit activity is a threat to all modern businesses, affecting their profits, their reputation and, in some cases, the safety of their consumers. But, so persistent is the threat – particularly online – that it can be difficult for companies to know where to start. We set out the answers to some frequently asked questions.

What is anti-counterfeiting – and is it a criminal offence? Counterfeiting describes the process of manufacturing and offering for sale a product (or a range of products) using the brand of a third party without their authorisation. Many counterfeit products are passed off as genuine branded products whereas others are sold to consumers openly as replicas. While some counterfeit products are of inferior quality, many counterfeit products are more or less accurate replicas of the rightful brand owner’s products. As they are sold using a brand that is identical to or substantially indistinguishable from the brand owner’s trademark, consumers may be led to purchase the fake product believing it to be a legitimate item. (Read more)

Do I need an anti-counterfeiting strategy? Counterfeiting affects companies in a wide variety of industries, from fashion to pharmaceuticals. If you have a product or a brand that is popular and in demand, then it’s likely that you are or will become a target for counterfeiters. The threat posed by counterfeiting activity can be hard to quantify, but it should not be underestimated. Typically, a company’s sales and revenue will not only be impacted, but it will also suffer damage to brand reputation (e.g. where a customer mistakenly believes that they have purchased an authentic product and are disappointed with its quality), as well as loss of licensing revenue. (Read more)

What kind of products are at risk of counterfeiting? Counterfeiting affects a broad a variety of goods; from t-shirts to handbags, machinery and automotive parts, toys, batteries, pharmaceuticals, perfumes and electrical goods.

Where are counterfeit goods made? According to recent estimates by the World Customs Organisation, the majority of counterfeit products (approx 75%) are manufactured in the Far East region, mainly China. Other high-risk countries include Hong-Kong, India, Turkey and the United Arab Emirates. From these countries, goods are shipped into the UK/EU and sold to end users in retail stores, open markets and through online shops and marketplaces; although, the exact route and origin can vary greatly depending on your business sector. In fast-moving retail sectors, for example, counterfeiting may also take place in the UK.

What can brand owners do to protect their products and brands from counterfeiting? Brand owners can call upon a variety of tools to act against counterfeit activity once it has been identified, but tools and techniques to prevent and identify activity are of particular importance. This includes, for example:

• registering key brand and product names as trademarks, and innovative design features as design rights, so that you can seek legal redress for any unauthorised use of those trademark or design rights (e.g. for the manufacture, distribution and sale of trademarked goods);
• raising awareness of the issues within your business by educating your staff, business partners and customers;
• actively monitoring the online and offline market, recording, reporting and carefully analysing the findings;
• working closely with law enforcement authorities such as the Border Force (Customs) and local Trading Standards offices that have a statutory duty to enforce the criminal provisions of Trademarks Act; and
• taking enforcement action where appropriate.

(Read more)

Someone is trafficking counterfeit copies of my products, what can I do? Recording your trademark rights with Customs in the UK and overseas will enable Customs officials to spot and detain shipments containing related counterfeit goods. There is a cost involved, so focus on Customs in your key markets, as well as in countries that are well-known for manufacturing counterfeit goods or have major transit hubs and international trade ports, such as Dubai and Hong Kong. In addition, it’s important to educate Customs officials on an ongoing basis about your priority products, tell-tale signs for spotting counterfeits and details of who to contact if they have concerns. This can be done by providing a product guide, as well as regular face-to-face training. (Read more)

How do I record my trademarks with Customs? Working with customs authorities in the UK and EU is essential for the success of your anti-counterfeiting efforts. It’s important to record your trademark with customs departments if you are to identify and act against infringing products; however, we would also recommend providing customs with supporting information/examples of your genuine branded goods, their packaging and usual shipping routes when filing the trademark recordal/application for action. This will help customs to detect anything unusual at border control and to identify and alert you to suspicious consignments. A trademark recordal generally lasts one year and is renewable. (Read more)

Someone is selling counterfeit copies of my products online, what should I do? Depending on the circumstances, it may be possible to remove the offer/website from the internet or it may be appropriate to investigate the seller further to find out more information about the product’s suppliers, distribution channel and/or origin in order to stamp them out at source.

Someone is manufacturing fake copies of my products in the UK/overseas, what should I do? If in the UK, you should first investigate and collect all available information, then contact your relevant Trading Standards body in order to coordinate enforcement action with them. If the manufacture is taking place overseas, you will instead need to liaise with local agents or investigators and involve local police and authorities. In both cases, you might find it simpler or more cost-effective to work with a specialist such as Novagraaf to help you coordinate and manage enforcement actions. Novagraaf offers a range of anti-counterfeiting services, from online trademark monitoring to investigation, trap purchases, trademark training, trademark recordals and legal representation in customs seizure proceedings.

How should I evaluate my anti-counterfeiting strategy to measure its success? As with any business strategy, the basic criteria against which to measure success should be set up before you begin to target and implement your anti-counterfeiting activity. This will enable you to objectively assess the results of any actions taken against counterfeiters. It is essential to keep results under regular review and to revise tactics and strategy on an on-going basis. In particular, you should look to assess and re-assess the commercial damage caused by counterfeiting and to ensure that actions taken are appropriate and proportional. (Read more)

What are the benefits of a criminal action? As well as being actionable in the UK under civil law, the infringement of trademark rights through counterfeiting can constitute a criminal offence. Both Trading Standards and the police have the power (and duty) to enforce the criminal provisions of the UK’s Trade Marks Act; although, in practice, the majority of criminal prosecutions are brought by Trading Standards. Criminal proceedings offer a number of advantages to the trademark owner. For a start, they are generally much quicker than civil actions, and are often completed in around nine months. (Read more)