Merry Fake-mas: Protecting Clients from Counterfeiting

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Merry Fake-mas: Protecting Clients from Counterfeiting

06 Dec 2018

With Christmas just around the corner, many consumers will unwittingly end up with counterfeit goods under their tree. Here, Bruce Jones and Helen Harmel, brand protection experts from Kuits’ intellectual property team, explore the prevailing landscape for consumers, manufacturers and retailers.

More than half of British consumers have bought a counterfeit product online in the last year. Manchester is a hotspot for counterfeiting, often dubbed the “fakes capital of the UK”.  In recent raids in the Strangeways area, four shops were shut down and goods were seized with a retail value of around £2.5 million.

With Christmas approaching, counterfeiters are gearing up for this busy time of year in the same way as legitimate manufacturers and retailers.  Consumers can lose out not only in that they do not receive the genuine goods, but in that goods they have ordered online may be seized at the border and therefore not received at all, leaving them out of pocket.  However, the most serious consequence for consumers is that the goods may not be safe.

Electronic counterfeits are not subject to the same rigorous tests as those products they are imitating. According to findings earlier this year, one in three of us have mistakenly bought fake and potentially dangerous electronic goods online. Many of these goods were identified as hazardous by the charity Electrical Safety First (ESF), and were being sold on popular third party e-commerce websites such as Amazon and eBay. ESF’s tests on the most popular counterfeit goods, including e-cigarettes and blenders, found that there were risks that these unregulated products could set alight and even explode, constituting a significant risk to consumers. It is estimated that 99% of fake Apple chargers would fail basic safety tests. ESF are one of many that are calling on e-commerce websites to increase their efforts to combat the use of their platforms in the sale of counterfeit goods.

In our experience of dealing with these cases, the problem for law enforcers and consumers alike is that products are increasingly being sold online through third party e-commerce websites, making the sellers harder to identify and giving the products an air of legitimacy in the eyes of an uninformed consumer.

Trade mark proprietors have the option of bringing a private prosecution, as well as, or instead of, civil proceedings for trade mark infringement. To succeed in criminal proceedings, it will be necessary to prove beyond reasonable doubt that the defendant has committed an act of trade mark infringement.

Bringing criminal proceedings can be less expensive than civil proceedings and the risk that an individual may be personally liable in criminal proceedings can be a useful tool in making infringers take notice. Another useful tool for right holders is the ability to make an application to UK Customs, who can detain suspected counterfeit goods at the border.

Civil proceedings will, however, often be the most appropriate option due to the wide range of remedies available and the lower burden of proof.  The civil court can order delivery up or destruction of infringing goods; disclosure of supplier information; an injunction to cease infringement; damages or an account of profits and a contribution to legal costs.

To speak to an expert regarding this issue, please call 0161 838 7816.

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