9 Top Tips for manufacturers and brand owners who want to stop counterfeiters and copiers
Liz Ward of Lawyer member firm Virtuoso Legal gives 9 Top Tips on how to stop the counterfeiters and copiers
With it being the holiday season I’ve caught one or two daytime programmes lately (Judge Rinder is my guilty pleasure as he is so funny – I’d love to see him in the IPEC courts!) In the last few days, however, it has been “Fake Britain” that caught my eye. The last few episodes have included fake DREAM mattresses and fake cashmere and mohair. The latter featured Selina Scott as champion of the genuine, properly sourced real fibre.
The big problem here for manufacturers is how to tackle the fakes and the devaluing of the brand because of the activity of the fraudsters
. The fake Dream mattresses only had 600 springs in them (and not the 3000, as advertised!). So, a mattress may look like a real one but until you cut it open you won’t know for sure. It won’t of course wear or be as comfortable as the genuine 3000 spring version. Similarly, with cashmere, most of us can only tell it isn’t 100% cashmere when we’ve worn it for a while, or washed it. Fraudsters, however, are very adept at copying logos and labels to make things look “real”. So, what can you do if you’re a manufacturer and this problem affects you?
Here’s a few top tips:
1. Always make sure your brand names and logos are registered as trade marks. If you have a registered trade mark, then trading standards officers, or you as the manufacturer, can use the criminal provisions in the Trade Mark Act to enforce your rights.
2. The use of ® on a brand that isn’t registered is a criminal offence. So don’t think blagging your way with consumers will help – it won’t and it could land you in bother if you’re reported for doing it.
3. Make sure your trade mark is registered wherever it is used. Trade marks are geographic in nature. If you export, you must have a properly registered trade mark in the countries where you require protection. We’ve seen many clients who have done a “DIY” trade mark registration and then found it impossible to enforce their mark because it is defective. Or indeed, they believed that a UK registration will protect them overseas. It won’t!
4. Some manufacturers and brand owners take private criminal prosecutions against offenders. Whilst many trading standards departments try really hard, like any other local Government department they have had their budgets squeezed and their legal budgets for prosecutions slashed. This means that in some parts of the UK the local trading standards departments find it almost impossible to keep up with fraudsters selling fakes. Private criminal prosecutions can be very effective at deterring the wrong doers.
5. Remember to keep up with trade mark registrations. Sometimes manufacturers forget to register new logos, or don’t watch their current brands. Trade mark watching services to watch over your key brands can be useful as they can guard against similar brands coming into the market and registering a similar mark and obtaining a quasi legal defence to using a “look a like” mark. Fraudsters from outside the UK are often better informed about how to get around the law than British manufacturers and they’re very aware of the value of a good British brand.
6. Encourage your supply chain to be vigilant. Often your distributors and agents will alert you to fake brands doing the rounds. Make sure they have an obligation to inform you of those fakes and ensure that you act upon their information.
7. Watch what happens on line. Counterfeit products no longer rely on car boot sales to flog their goods. The counterfeiters selling Dream beds had liveried vans and staff uniforms! They even changed the Dreams logo on the vans within 3 weeks of the Dreams brand refresh. It is easy for counterfeiters to do things such as buy domain names containing the trade mark, or bid on key words for Google Adwords. It is also relatively easy to sell goods on some on line platforms.
8. If you have a problem, then please consult an Intellectual Property expert. It is vital to properly collect evidence and to pursue the fraudsters in a systematic way to ensure that they are closed down once and for all and to stop the damage to your brand and your business.
9. In some circumstances, HMRC and their overseas equivalents will impound fake goods at the docks. However, for the best chance of fake versions of your products being stopped at the border, you must have registered trade marks and the right kind of evidence in order for HMRC to take action.
Remember that fake goods often have hidden costs to brand owners and that is the diminishing brand reputation which arises because of poor quality goods being circulated. In a competitive market, this can be the difference between success and failure on your balance sheet. If you have an issue with fakes then we’d be happy to help.
Principal Virtuoso Legal.
Telephone 0113 237 9900 or 0207 412 8372
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