Costs and budgeting
Costs of customs actions
There is no official fee for lodging a customs notification in the UK and the same is true of many countries.
Lawyers’ fees for preparing a UK notification should not be high assuming you can quickly provide most of the information needed.
Keep costs under control by taking a targeted approach to customs recordals and action, prioritising known high-risk countries, transit hubs and key markets.
Sometimes counterfeiters will consent to destruction of the suspect goods (or effectively consent by not responding) or will quickly settle if proceedings are initiated against them. This can keep costs in check. Remember that IP owners don’t have to initiate infringement proceedings if they don’t want to when suspect goods are seized.
Remember costs may be incurred for storage and destruction of suspect goods. If the declarant or holder of the allegedly infringing goods objects to the destruction of suspect goods, you will have to initiate proceedings for infringement if you don’t want the goods to be released. However, often the commencement of such a claim is enough to help force a settlement.
Having template documents and guides to help identify counterfeit goods can help to keep costs down and avoid you having to reinvent the wheel every time.
There is no official fee for lodging a customs notification in the UK and the same is true of many countries.
Lawyers’ fees for preparing a UK notification should not be high assuming you can quickly provide most of the information needed.
Keep costs under control by taking a targeted approach to customs recordals and action, prioritising known high-risk countries, transit hubs and key markets.
Sometimes counterfeiters will consent to destruction of the suspect goods (or effectively consent by not responding) or will quickly settle if proceedings are initiated against them. This can keep costs in check. Remember that IP owners don’t have to initiate infringement proceedings if they don’t want to when suspect goods are seized.
Remember costs may be incurred for storage and destruction of suspect goods. If the declarant or holder of the allegedly infringing goods objects to the destruction of suspect goods, you will have to initiate proceedings for infringement if you don’t want the goods to be released. However, often the commencement of such a claim is enough to help force a settlement.
Having template documents and guides to help identify counterfeit goods can help to keep costs down and avoid you having to reinvent the wheel every time.
Costs of working with Trading Standards and the police
- Supporting law enforcement seizures can be handled in-house if you have enough resources to review samples, liaise with Trading Standards and draft witness statements and expert reports.
- Costs can be kept under control by preparing template documents and guides to help identify counterfeit goods in advance.
- Additional time and costs will be incurred if you or your lawyers attend raids with Trading Standards, or if you support a later prosecution.
- In many cases, the threat of action from Trading Standards will be sufficient to dissuade a low-key counterfeiter, and no significant action will be required.
Costs of private criminal prosecutions
- The costs of private criminal prosecutions are usually recoverable from central funds, but the court will only reimburse a reasonable amount and it has a discretion to decline to make an order for reimbursement if the prosecution was started or continued unreasonably, or if there’s some other good reason.
Costs of working with Trading Standards and the police
- Supporting law enforcement seizures can be handled in-house if you have enough resources to review samples, liaise with Trading Standards and draft witness statements and expert reports.
- Costs can be kept under control by preparing template documents and guides to help identify counterfeit goods in advance.
- Additional time and costs will be incurred if you or your lawyers attend raids with Trading Standards, or if you support a later prosecution.
- In many cases, the threat of action from Trading Standards will be sufficient to dissuade a low-key counterfeiter, and no significant action will be required.
Costs of private criminal prosecutions
- The costs of private criminal prosecutions are usually recoverable from central funds, but the court will only reimburse a reasonable amount and it has a discretion to decline to make an order for reimbursement if the prosecution was started or continued unreasonably, or if there’s some other good reason.
Costs of civil proceedings
- UK civil litigation is usually the most expensive option, but not if early settlement is reached and judicial use of STS and IPEC claims is used alongside applications for judgment in default or summary judgment. In some cases, civil proceedings can be made self-funding or nearly so – see below.
- Costs will vary depending on the complexity of the matter, if the defendant takes the proceedings seriously and does not cause unnecessary delay and at what point the proceedings come to an end.
- Preparing and serving the claim form and particulars of claim will likely cost thousands of pounds. Exchange of disclosure lists and reviewing the other side’s disclosure tends to be labour intensive and will be much more costly, as will preparing your evidence and reviewing the other side’s evidence.
- If you make any substantial applications, such as applications for summary judgment, an interim injunction or a search and seizure order, this is likely to cost tens of thousands of pounds.
- Costs can be reduced by handling some of the process in-house and by developing precedent documents and agreed systems. The ready availability of sales information to support any damages claim will also be key.
- You should not expect to recover more than about 60% of the costs of a successful civil action (unless in the IPEC or STS) and, even then, the defendant may not be able to pay. Explore obtaining an injunction to prevent dissipation of assets. Consider trying to obtain insurance for large cases.
Reducing the costs of civil proceedings
Targeting infringers with significant assets can be a good way to make litigation self-funding.
Private investigators can be used to help determine if the defendant owns a house or other significant assets, although only experienced investigators should be used.
Costs can also be reduced in the following ways:
- Use online enforcement tools which can significantly reduce costs and automate much of the online enforcement process. For more information on this, see tab 4 of this guide.
- Use local authorities for enforcement action, where appropriate.
- Bring private criminal prosecutions (where your costs should – at least in part – be reimbursed) in appropriate cases.
- Take enforcement action, or share information, with other rights holders or industry coalitions.
- Force early settlement and bring claims under the STS scheme or in the IPEC.
Justifying costs
- Costs can often be justified by educating the business about the impact of counterfeiting on legitimate sales and brand value, as well as the impact of successful enforcement.
- For those with more substantial anti-counterfeiting strategies, tracking a range of metrics can be powerful (eg the number of repeat offenders, number of counterfeits identified and the prevalence of counterfeits on online marketplaces).