Anti-counterfeiting refers to the practice of preventing intellectual property theft by protecting a proprietary asset from being fraudulently copied. It is one of the greatest threats to businesses today, so it has become a necessity to take countermeasures to protect their intellectual property as well as prevent detrimental financial losses to the business. In this article, we’ll take a look at counterfeiting, what it means, and how to protect businesses against it.

The Adverse Effects of Counterfeit Goods

There are numerous reasons why a company would seek to protect their IP from counterfeiting. Generally, businesses will take measures to prevent counterfeiting for financial reasons in order to protect brand value and prevent a loss of potential revenue. There may also be health and safety reasons to prevent counterfeiting, for example, in the pharmaceutical industry, where counterfeit goods are not produced correctly or safety tested, which can result in hazardous outcomes for those who use them. In these cases, a lack of quality control coupled with a mass-produced product can mean much more than financial loss; it can result in a significant loss of life.

How to Prevent Counterfeiting

The most important point for a business to understand when it seeks to implement procedures to prevent counterfeiting is that it should not pursue counterfeit goods on a case-by-case basis. This can result in greater financial loss through legal costs and there is no guarantee that a case will conclude favorably for the business. Additionally, even if a business were to have a favorable conclusion, the issue is not addressed at the source, so it does not prevent or deter others from counterfeiting the IP assets.

Since an idea or concept cannot be protected through IP law, a business must protect their IP assets from counterfeiting through various other methods, such as a trademark registration for sellable goods and services or a patent for the product of an idea or concept. Once these IP protections are established, anti-counterfeiting measures can be taken to monitor and supervise.

An IP firm will engage investigators for this purpose and liaise with law enforcement to take legal action, if necessary. Additionally, the IP firm will develop targeted strategies for dealing with markets and countries where counterfeiting is a more prevalent issue. For instance, in countries such as China, where counterfeiting can be a common practice, but difficult for businesses to address, the IP management firm will have local resources available to identify and trace the source of the counterfeit products.

What is Internet Counterfeiting?

In recent years, Internet counterfeiting has also become a difficult issue for businesses to tackle due to the anonymity provided by the virtual world. New measures of protection against online counterfeiting are being developed by organizations, such as International Anti-Counterfeiting Coalition (IACC), to address the problem. For example, it developed RogueBlock, a payment processor initiative, which partners with credit card and financial services providers to block or terminate counterfeit merchant accounts, so they cannot receive payments from customers.

Key Steps You Can Take to Protect Your Business

While there are organizations developing methods against counterfeiting on a broad scale for the real and virtual world, there are also direct steps that businesses can take with an IP management provider to protect their assets from counterfeit merchants:

1. Regular in-depth analysis of their IP rights, current IP protection strategy and the value of their IP assets. This will not only help the business to maintain an IP portfolio that makes sense financially, but it will also allow them to address and react to any gaps in IP protection in a timely manner.

2. Develop an IP protection strategy to understand their IP rights and how, if possible, to better protect current IP assets. For example, this would include assessing whether a trademark should be filed in Italy, other countries or proceed directly to international registration.

3. Establish and activate investigation and surveillance services in the relevant markets, countries or regions to ensure that a business can verify and react in real time to counterfeit merchants who are violating their IP rights.

4. Gather evidence of any infringement of IP rights, such as examples of the counterfeit goods or screenshots of websites where counterfeit goods are being offered for sale.

Counterfeiting has become a global challenge that must be addressed offline and online. The ability for counterfeit merchants to remain anonymous has exacerbated the issue both financially and legally. Going forward, the best approach for a business is to develop an IP protection strategy with a specialist that deals with businesses who are prone to being counterfeited. They can provide a network of resources to tackle the issue swiftly at the source. You might need to send an initial cease and desist order to the counterfeiter. Or you may need to pursue legal action to receive compensation or block counterfeit goods from entering customs. In any case, an IP management services provider can plan and enact anti-counterfeiting measures to help you protect your IP rights.


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Article by: Stefano Giro