According to the Organisation for Economic Co-operation and Development (OECD), annual trade in counterfeit goods is worth approximately US$250 billion worldwide every year. For that reason, it is essential for brand owners to take steps to combat counterfeit goods. In addition to its general litigation capabilities, our team has specialised expertise in the area of combating counterfeit goods.

What is counterfeiting ?

In terms of the Counterfeit Goods Act, counterfeiting is:

  • the manufacturing, producing or making of goods in such manner and to such a degree that those goods are substantially identical copies of goods that are protected by an intellectual property right;
  • the manufacturing, producing, making or applying to goods the subject matter of an intellectual property right, or a colourable imitation of an intellectual property right, so that goods are calculated to be confused with or to be taken as being the protected goods of the owner of the intellectual property right or goods manufactured, produced or made under the owner’s licence.

What intellectual property rights are protected against counterfeiting?

An “intellectual property right” includes:

  • a trade mark registered
  • copyright in any work
  • a right conferred

Identifying counterfeit goods

The first step in combating counterfeit goods is to identify them. We recommend that owners of trade marks in industries where counterfeiting is a problem (especially clothing, textiles and consumer goods) consider recording their registered trademarks with customs officials. If a trade mark is recorded with customs officials, the officials will conduct random inspections of containers and stop any goods that are suspected to be counterfeit goods.

Lodging a complaint

If suspected counterfeit goods are identified, any person interested may request a counterfeit goods inspector to investigate whether or not there is a reasonable suspicion of dealing in counterfeit goods and lodge a complaint. Persons with an interest in lodging a complaint may include :

  • an owner of an intellectual property right in respect of the protected goods;
  • a licensee of an intellectual property right in respect of the protected goods;
  • an importer, exporter or distributor of protected goods; or
  • an authorised agent or representative or the attorney of any of those persons.

If the inspector is satisfied that there is a reasonable suspicion that the goods are counterfeit, he or she may obtain the necessary warrant to enter the premises where the suspected counterfeit goods are stored and seize the goods. After the date of seizure, there are specific time periods within which a criminal complaint may be lodged and notice of intention to institute civil proceedings given. In many cases, a complainant may choose to lodge both a criminal complaint and civil proceedings.

Other strategic considerations

In addition to enforcement strategies to combat counterfeit goods, it is our experience that a solid anti-counterfeiting strategy may often include marketing strategies and packaging of products that educate the public about counterfeit goods and the associated dangers. A dynamic approach to the problem is often necessary to reduce counterfeiting of a particular brand. For more information and for assistance with anti-counterfeiting strategies, customs recordals and to lodge a complaint in respect of suspected counterfeit goods, please do not hesitate to contact our trade marks department.