In a previous post regarding the current upward trend in global counterfeiting, it was noted that the head of the European Union agency responsible for policing intellectual property rights described the situation as “deeply concerning” and said it “clearly calls for coordinated action, at all levels, to be fully tackled.”
While certainly true that such action on the part of regulators and customs enforcement authorities around the would be needed to fully crack down on the booming trade in fake merchandise, expecting governments in all of the various countries involved to move collectively in this direction any time soon is probably not realistic. That being the case, a large part of the onus for tackling the growing problem in the meantime will remain with brand owners themselves.
With this in mind, the following are some pragmatic steps that can and should be taken in the fight against the growing problem of counterfeits:
Seeing that online marketplaces are one of the largest sources of counterfeit traffic these days, continuous monitoring of key sites like Amazon and eBay is an absolutely essential step for any brand owner to take. While this relentless task can be daunting, advanced image-recognition and name search technology is available to help facilitate the process more efficiently. Most major internet retailers provide a claims process whereby legitimate brand owners can report suspicious listings that have been identified and request they be removed. Marketplaces are generally happy to oblige with such requests, but depending on the site, actual delisting of the offending merchandise can take anywhere between an hour and five business days.
Amazon recently announced Project Zero, a series of measures designed to keep counterfeit products off its marketplace and protect sellers of authentic products. The new initiative provides automated protections (a machine learning-based tool that scans Amazon stores and removes suspected counterfeits) and a self-service removal application that enables brand partners to take down fake products themselves. Although currently just an “invite-only experience,” sellers can be added to a waitlist for future enrollment.
Brand owners should also be sure to sign up with Amazon’s existing brand registry, a free service it says has helped in the investigation of 93% of infringement notices through the registry within four hours. Other major online marketplaces have similar programs, such as eBay’s Verified Rights Owner Program and Alibaba’s Intellectual Property Protection Platform.
While properly registering your trademark with the appropriate government body in your home market (the Canadian Intellectual Property Office or the U.S. Patent and Trademark Office, for example) is obviously essential, so too should be securing registration as fast as possible for your trademark in China. Although having registration in Canada or the U.S. alone is sufficient for brand owners to take action with respect to certain online retailers, Chinese law only protects intellectual property in that country if the trademark has been officially registered in China. Additionally, once trademarked in China, brand owners can register their product with the General Administration of Customs, which can aid in preventing faked products from being exported in the first place.
Brand owners should be prepared to be aggressive and move quickly when it comes to taking legal action against counterfeiters and illegitimate vendors. When sending a cease and desist letter or looking into civil litigation, the sooner the process is initiated the better chance you have of filing and winning a lawsuit. Should legal action in China be called for, an experienced and trustworthy Chinese lawyer that is competent in the field of intellectual property rights will be indispensable. Helpful information on hiring a lawyer in China can be found here and here.
Newer digital identification schemes (QR code, RFID) which utilize blockchain technology to prevent fraud and counterfeiting by tracking goods from end-to-end could be an option for brand owners if the investment is warranted. This approach can be challenging to implement successfully, however, as it involves getting all actors in your supply chain to participate.
At the end of the day, one of the cheapest and most effective ways for brand owners to thwart counterfeiters is to continually strive to educate customers about the issue through their website, blogs, social media, etc. Raising awareness about where counterfeit versions of your products are most frequently sold, what to look for in terms of distinguishing knockoffs from the genuine article, and steps they should take when encountering counterfeit products online will help turn your valued customer into a vigilant ally in the fight against fakes.