Printed from the Field Fisher Waterhouse web site
Web address: http://www.ffw.com/sectors/retail/retail---anti-counterfeiting.aspx

Practices

Retail - anti-counterfeiting / anti-piracy services

Brand owners are often the victims of their own success: the more successful a product, the more likely it is that it will be coveted by the consumer and targeted by counterfeiters or pirates and the greater the risk of damage to their intellectual property.

Trade channels are continuously changing: car boot sales and street markets have been largely overtaken by internet auction sites, trade web sites and chat rooms. Brand owners need to be alert to all forms of attack and adapt to the new challenges of the digital age.

Counterfeiting and piracy can never be eradicated but the greatest deterrent to infringers is a proactive brand owner who thinks laterally about their anti-counterfeiting and anti-piracy strategy.

Our service

We have a track record of advising on implementing strategies to prevent counterfeiting and piracy. We work in conjunction with in-house advisers, specialist investigators and government agencies to achieve a cost effective and co-ordinated resolution.

In addition to our experience of dealing with traditional trade routes, after many years of helping clients with issues relating to the internet, we are also well placed to advise on online anti-counterfeiting and anti-piracy protection.

We work with a close network of international specialists to advise on issues relating to their jurisdictions and together we offer a truly global solution to your problems.

"CounterACT" is our comprehensive strategy for anti-counterfeiting and anti-piracy needs. We work with you to identify the extent of your problem and the resources available to develop a tailored programme to meet your needs.

We have many tools to help stem the increased tide in counterfeit and pirated goods along the whole supply chain, including:

  • online surveillance
  • investigators
  • Trading Standards
  • Customs
  • Police
  • civil action
Our experience

We work with a number of clients to tackle counterfeiting and piracy of their products on a global basis. For example, we regularly deal with Trading Standards and HM Revenue & Customs in England & Wales regarding the seizure of counterfeit and pirated goods and assist in the prosecution of those involved. Examples of recent cases on which we have advised include:

  • We worked with a global mobile phone manufacturer to prevent the supply and sale of counterfeit and pirate accessories.
  • We educated Customs/Trading Standards, which led to a significant increase in their activities, and in addition took action against vendors throughout the supply chain, identifying a number of manufacturers in the Far East, allowing enforcement measures to be taken in the relevant jurisdictions. As a result of monies recovered from infringers the cost to our client of the programme was neutral.
  • We were instructed by a film production and distribution company to prevent the unlawful uploading of a new film onto the internet. We worked with specialist investigators to identify the uploaders and applied to the US Court for disclosure of their addresses from their internet service providers. Enforcement action was then taken.
  • We are working to protect the brands of a celebrity couple by co-ordinating action in jurisdictions across the globe to reduce the circulation of counterfeit and pirated products.
  • We are working with a multinational technology corporation, for whom we record their IPRs with Customs authorities throughout Europe to ensure counterfeit goods are seized in all EEA Member States.