European Union: Are You Using All Of The Tools At Your Disposal To Protect Your Business From Counterfeiting In The UK And EU?

Instances of counterfeiting and other forms of IP crime are steadily increasing. According to a 2019 report on Trends in Trade in Counterfeit and Pirated Goods, Illicit Trade, trade in fake goods is now worth $509 billion which equates to 3.3% of world trade. Almost 7% of products imported into Europe have been found to be counterfeit which corresponds to €121 billion worth of counterfeit goods each year. Worryingly, 37% of fake goods detained at EU borders were deemed to be dangerous to consumers. In respect of the UK, counterfeit goods make up 3% of all imports and the total value of lost sales from products smuggled into the UK is £9.2 billion. As such, it is more important than ever that businesses make use the tools available to them to tackle counterfeiting.

Application For Action

Customs officers have powers to prevent counterfeit products from entering the market at the border level. Submitting an Application for Action (AFA) either at an UK or EU level (for customs action in 2 or more EU member states) will enable customs to identify counterfeit goods that may infringe your intellectual property rights. Along with details of your intellectual property rights, information on how to identify genuine goods can be added to the AFA. Whilst there is no fee for submitting an AFA, you will be required to undertake the costs incurred by customs if counterfeit goods are detained at your consent and/or later destroyed by customs. It is also recommended that you notify customs of urgent intelligence regarding counterfeit consignments via the Red Alert form, and report recent trends via the New Trends form once an AFA form has been submitted to customs.

In view of Brexit, it is important to note that from 1 January 2021 EU, an EU AFA can no longer be submitted to the UK's Revenue and Customs Office. In addition, existing EU AFAs will no longer cover the UK and any previously filed EU AFA through UK customs will no longer be valid. As such, we recommend submitting new UK AFAs to UK customs before 31 December and submitting new EU AFAs with a customs office one of the member states (contact details can be found here).

European Observatory's Enforcement Database (EU)

Integrated with the EU law enforcement agency, Europol, and the European anti-fraud office, OLAF, the European Observatory's Enforcement Database (EDB) is used by owners of EU registered trade mark and design rights and EU enforcement authorities to communicate effectively. Via the platform, IP rights holders and their representatives can submit AFAs, keep up to date with ongoing cases with customs offices and submit urgent alerts to customs offices. Importantly, using this system will allow EU customs authorities to search for your products and access your contact details with ease.

Trading Standards/ Police Intellectual Property Crime Unit (UK)

As well as building strong relationships with your suppliers, manufactures and distributers to fight against counterfeiting, you should also develop a good working relationship with trading standards. In the UK, Trading Standards, have powers to bring legal action against a seller with fake or counterfeit goods on the basis of trade mark and copyright infringement as well as breach of the unfair trading regulations. As trading standards are a public body and hence, are dependent on government budgets, providing them with sufficient research and evidence to demonstrate counterfeiting will increase the likelihood of them choosing to proceed with the case.

The Police Intellectual Property Crime Unit PIPCU can also bring cases of IP infringement against counterfeiting in the UK. Since its creation in 2013, the PIPCU has investigated IP crime worth more than £100 million concerning counterfeit goods or digital piracy and has suspended more than 30,000 websites selling counterfeit goods. Again, before bringing a case to the PIPCU, ensure you obtain sufficient evidence of IP infringement to increase the likelihood of them deciding to proceed with the case.

In the UK, it is also possible to bring criminal proceedings against counterfeiters under s.92 of the UK Trade Marks Act 1994, or bring civil proceedings for infringement, which can result in effective remedies such as interim injunctions, freezing and search orders.

Online Tools

Counterfeiters are increasingly using the internet to promote and distribute counterfeit products. Given the unregulated nature of online marketplaces and social media, criminal groups are increasingly engaged in the sale of both counterfeit products and pirated digital content, such as films, TV, music, live sporting events, e-books and games as stated in the EUIPO's 2020 status report on infringement of intellectual property rights in the EU. Businesses should conduct their own regular online monitoring campaigns to identify and remove counterfeit content, or subscribe to third party services to monitor online activity. It can also be effective to ask employees or consumers to engage in the online fight against counterfeiting. Along with submitting take down requests via the various sites, sending demand letters and filing domain name complaints can also be effective.

Originally published by Finnegan, October 2020

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.