04 Jun 2018

CU LAB - How can I protect my business from counterfeiters?

James Neil outlines three steps businesses can take to protect themselves from counterfeiters.

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From what we can see counterfeiting is on the rise and it's not just handbags anymore.  Counterfeiters are going after a huge range of products whether it's baby formula or food products or even lifesaving pharmaceuticals so what can your business do to protect yourself from the scourge  of counterfeiting. 

There's really three key areas that you need to focus on. 

The first area is making sure that you have the necessary IP weaponry to go after counterfeiters when you find them.  What does this mean?  Well it means making sure you've got registered trademarks for your key brands and product names and it means  if you've got a new and distinctive design for your new product, register that design with IP Australia before you launch it in the market, and tt means making sure that your business rather than some external design agency owns copyright in the photographs and artwork that you use to sell your products. 

The second area that you need to focus on is having effective monitoring systems so this means making sure that you've got someone conducting regular searches of online platforms like ebay, might even include having private investigators conducting trap purchases of suspicious products and you can also ask customers to at least try to prevent infringing goods from entering the Australian market. 

The third area that you need to focus on and potentially the most important one is taking swift and decisive action against counterfeiters when you find them.  The first step will normally be a letter of demand from your lawyer and that can often do the trick if you act quickly but if it doesn't then you need to consider commencing court proceedings and that might include seeking an urgent injunction to get the relevant products off the market and stop any further harm from being caused.  But the really critical thing in this area is to make sure that your business is not seen as a soft touch from a counterfeiting perspective.  We know from experience that if you're weak with counterfeiters particularly as compared against what your competitors do, counterfeiters will see your business as a soft touch and go after your products time and time again, they'll think that they can get away with anything but by contrast if you take strong action against counterfeiters when you find them potentially commencing court proceedings where it's appropriate to do so the word will get out, these people do talk to one another funnily enough and your strong action will act as a deterrent to prevent them from copying your products going forward.