CHRISTMAS OFFER Subscribe to Cotswold Life today CLICK HERE

Legal point of view (September 2014)

PUBLISHED: 16:27 04 September 2014

Riyaz Jariwalla

Riyaz Jariwalla

Archant

Counterfeit is on the rise, are you prepared? Infringement of intellectual property cases are at a high, says Riyaz Jariwalla of BPE Solicitors

With the advancements of technology, including the speed at which sophisticated scanners and 3D printers are now able to reproduce or imitate an original product, infringers are finding new ways to copy, imitate and ride the coat tails of successful brand owners and their products. As a result, cases of infringement of intellectual property rights through counterfeit goods are at a high.

Only in rare circumstances should litigation be the first line of attack when dealing with counterfeit goods. However, when ‘jaw jaw’ (in the words of Winston Churchill) gets you nowhere, litigation has the potential to seriously disrupt the counterfeiter’s activities, bring an entire operation to a standstill and prohibit the counterfeit goods from spreading further into the marketplace.

The courts have wide ranging powers in the fight against counterfeit goods, including injunctions, freezing orders and search orders. They can also order the infringing party to deliver up all the infringing products at their cost; seek disclosure of customer or supplier’s information; pay damages or a proportion of unlawful profits made by the counterfeiters; and pay legal costs.

The Judiciary has recognised that intellectual property infringement claims are not straight-forward and can often be complex and high in value. The Patents Court is a specialist intellectual property court within the High Court in London and is a perfect venue for complex or high-value cases as there are no caps on final awards for damages or costs. The Intellectual Property Enterprise Court (“IPEC”), also in London, is a more cost-effective venue with a full time specialist IP judge but it does impose a cap on costs recovery (£50,000) and damages (£500,000). The IPEC also has a specialist small claims track to deal with claims that are £10,000 or less in value. Both courts are well suited to tackling urgent matters.

How to fight counterfeiting

Being prepared and responding rapidly

to any incident of infringement of your

rights is the most effective

anti-counterfeiting measure available to

you.

STEP 1:

Preparation is key - ensure that you have the appropriate protection.

Apply to register (1) all trade names, brands, logos as trade marks; (2) all unique and novel shapes and designs as registered designs; and (3) any inventions as patents. Once secured, ensure that all certificates of ownership and details of the protection are located centrally and accessible.

STEP 2:

Seek professional advice regarding obtaining legal expenses insurance, which can provide you with a war chest for policing and protecting your intellectual property rights.

STEP 3:

Record all relevant trade mark, patent and design registrations with UK Customs officials who can stop, search, monitor and examine consignments for goods arriving into the UK which may be counterfeit.

STEP 4:

Consider broadening protection in countries well known for manufacturing counterfeit goods (such as the Far East). These are often called ‘choke points’ and if you are able to mirror your IP rights in such countries, you will have more options for border protection to prevent goods leaving those countries destined for the UK or EU.

STEP 5:

Implement product ID such as holograms, markings, tracers and microchips to help you, border control and your customers identify counterfeits. Sending a cease and desist letter can be a relatively cheap way of stopping the infringing acts. However should this fail, consider contacting administrative authorities (such as HMRC and Trading Standards) to detain or seize the infringing goods. If this is not successful, litigation is your next option. Do not forget that an infringer can also be found guilty of a criminal act under various legislations, so it is worth waving these laws under the nose of the infringer before resorting to civil litigation.

For more information visit www.bpe.co.uk

0 comments

Welcome , please leave your message below.

Optional - JPG files only
Optional - MP3 files only
Optional - 3GP, AVI, MOV, MPG or WMV files
Comments

Please log in to leave a comment and share your views with other Cotswold Life visitors.

We enable people to post comments with the aim of encouraging open debate.

Only people who register and sign up to our terms and conditions can post comments. These terms and conditions explain our house rules and legal guidelines.

Comments are not edited by Cotswold Life staff prior to publication but may be automatically filtered.

If you have a complaint about a comment please contact us by clicking on the Report This Comment button next to the comment.

Not a member yet?

Register to create your own unique Cotswold Life account for free.

Signing up is free, quick and easy and offers you the chance to add comments, personalise the site with local information picked just for you, and more.

Sign up now

More from Out & about

Yesterday, 12:03

The Cotswolds are abundant with picture perfect locations ideal for a ramble. Gather loved ones, wrap up warm and blow away the cobwebs with one of these winter walks in the region

Read more
Mon, 13:15

Tracy Spiers takes an impressive, if hypothetical, budget on a shopping spree in Cheltenham’s independent stores

Read more
Mon, 12:23

Get out and enjoy seasonal celebrations with a Cotswold twist

Read more
Tuesday, December 4, 2018

If you’re looking for things to do in the Cotswolds this month, we have gathered plenty of events for you to pop in your diary

Read more
Tuesday, December 4, 2018

Hundreds of participating National Lottery-funded visitor attractions across the UK are saying ‘thanks’ to people who have raised money for good causes by buying a lottery ticket, including a number of venues in the Cotswolds

Read more
Monday, December 3, 2018

“We’re looking forward to lots of festive fun this Christmas festival and hope to welcome lots of people to our town.”

Read more
Monday, November 26, 2018

“Faringdon upholds old-fashioned values through its traditional shops, personal service and shop owners who go the extra mile to make their customers feel at home.”

Read more
Friday, November 23, 2018

Home to some of the country’s most breathtaking architecture and picturesque gardens, the Cotswolds boasts plenty of beautiful stately homes you need to visit. We pick eight special locations that are made even more magical during Christmas time

Read more
Tuesday, November 20, 2018

Taking the classroom outdoors is fun, inspires fresh ideas, broadens horizons – and encourages a new generation to enjoy and care for the Cotswolds

Read more
Monday, November 19, 2018

Chipping Campden – once the meeting place for a council of Saxon kings – now offers the warmest of welcomes to all its visitors, from the humble shopper to the seasonal shin-kicker

Read more
Thursday, November 15, 2018

As well as three days of action-packed racing and tradition, there’s plenty to do away from the course at this year’s November Meeting. Neil Phillips, The Wine Tipster, shares his 14 suggestions on how to make the most of your time at Cheltenham Racecourse

Read more
Tuesday, November 13, 2018

The Warwickshire town of Alcester is considered one of the best understood Roman settlements in the country. Tracy Spiers digs below the surface to discover its hidden jewels

Read more

Thanks to the impact of ground-breaking comedy This Country, the quiet market town of Northleach has become one of the Cotswolds’ hottest film locations. Katie Jarvis is sent to investigate

Read more
Tuesday, November 6, 2018

Stephen Roberts walks in the footsteps of the Oxford scholar who enjoyed attending parties dressed as a polar bear, and once chased a neighbour while dressed as an axe-wielding Anglo-Saxon

Read more

Newsletter Sign Up

Sign up to the following newsletters:

Sign up to receive our regular email newsletter

Our Privacy Policy

Topics of Interest

Food and Drink Directory A+ Education

Subscribe or buy a mag today

subscription ad

Local Business Directory

Property Search