About this guide and current issues
What’s included?
This guide provides an overview of the key legal and practical issues to consider when developing an anti-counterfeiting and parallel imports strategy within the UK.
Who is it relevant for?
Our guide is relevant for any brand owners who want to tackle counterfeits or illegal parallel imports, whether they simply want to ensure that they are covering the basics or already have developed anti-counterfeiting strategies. This is not just relevant for lawyers. Effective brand protection teams take a multidisciplinary approach, often led by detectives and specialists in this area, working alongside legal teams, in-house product experts and (where relevant) PR experts.
Key terminology
Counterfeit
An identical or near identical copy of a product, including its branding, which falsely claims to be the original product. Dealing in counterfeits will almost certainly constitute a criminal offence, as well as a civil wrong.
Dupe/Lookalike
A very similar copy of a product, with different branding, which does not claim to be the original product but a comparable alternative. Dealing in dupes/lookalikes may or may not constitute a civil wrong depending on the circumstances. It is not a criminal offence. This is a similar, but separate issue to counterfeiting which is beyond the scope of this guide.
Parallel import
A genuine product put on the market or distributed in a particular jurisdiction without the IP owner's consent – sometimes called grey market goods. While these are not counterfeit goods, they are often dealt with by IP owners as part of the same enforcement programme. For this reason, this guide also covers the legal and practical options for tackling parallel imports.
How do we cover these issues?
Our guide is structured as follows:
The IP framework
We start with an overview of the criminal and civil IP legal frameworks and who enforces them.
Online enforcement and technology
Since much of the trade in counterfeits/parallel imported goods occurs online, we consider how online enforcement tools can be effectively deployed by IP owners.
Enforcement by public bodies
We move on to consider enforcement by customs, Trading Standards and the police and what brand owners can do to help.
Enforcement by rights holders
We consider private criminal prosecutions and civil action by rights holders.
Other causes of action and reputation management
Since other offences are often committed alongside counterfeiting/illegal parallel importation, we cover these in a stand-alone section, alongside how brand owners should tackle any reputation management issues which arise when their products are counterfeited.
Costs and budgeting
We consider how rights holders should approach costs and budgeting.
Checklists
We set out some handy checklists for those starting out or with more advanced strategies.
At the bottom of each section, we include our top tips for success.
The IP framework
We start with an overview of the criminal and civil IP legal frameworks and who enforces them.
Online enforcement and technology
Since much of the trade in counterfeits/parallel imported goods occurs online, we consider how online enforcement tools can be effectively deployed by IP owners.
Enforcement by public bodies
We move on to consider enforcement by customs, Trading Standards and the police and what brand owners can do to help.
Enforcement by rights holders
We consider private criminal prosecutions and civil action by rights holders.
Other causes of action and reputation management
Since other offences are often committed alongside counterfeiting/illegal parallel importation, we cover these in a stand-alone section, alongside how brand owners should tackle any reputation management issues which arise when their products are counterfeited.
Costs and budgeting
We consider how rights holders should approach costs and budgeting.
Checklists
We set out some handy checklists for those starting out or with more advanced strategies.
What's the problem?
Brand owners are seeing an ever-growing number of their products being counterfeited. The quality of these counterfeit goods is also now so high that even experts struggle to distinguish fakes from the genuine item. In 2023, EU customs authorities intercepted counterfeit goods worth nearly EUR3.4 billion. The market looks set to continue to grow with projections that global trade in counterfeit goods could reach USD1.79 trillion in 2030.
Counterfeiting is not just an economic crime. It has impacts on health, safety, security and the environment. This is particularly true for items such as toys, cosmetics, medicines, cigarettes, food and drinks.
The trade in counterfeit goods jeopardises jobs, leads to loss of tax revenue and is a known source of funding for serious organised criminals and terrorists. Importantly for rights holders, it can also severely damage a brand’s reputation, impact consumer trust and loyalty (which can be very hard to win back) and, ultimately, reduce revenue and market share.
To beat advancements in detection technologies and enforcement techniques, global counterfeiters continue to develop sophisticated methods to produce and distribute fake products. This substantially affects the current counterfeit market, creating an intricate cat-and-mouse game between illicit counterfeiters and brand owners.
What are the current hot topics?
Some of the current hot topics in the anti-counterfeiting field are listed below.
Online sales
Around 20% of global retail sales take place online – a trend which does not show any signs of stopping with the rise of marketplace disrupters in Asia and the Americas and the increase in cross-border trade. Online platforms are often abused by infringers due to their size, scale, accessibility and potential for anonymity.
Technology
Increasingly, infringers are using more sophisticated technologies – such as 3D printing and AI – to create counterfeits, making identifying these counterfeits more difficult. New supply channels like 'dropshipping' have created opportunities for the sale of counterfeit and parallel imports without the infringer ever having to handle or store these goods.
Globalisation
A complex global supply chain, including outsourcing manufacturing to countries like China, can increase the risk of counterfeits and parallel imports, behind which counterfeit sales often hide. To compound this, in higher-risk territories, it’s often difficult to collate the evidence needed to enforce criminal sanctions.
Public attitudes
Encouraging the public to shun counterfeits and understand the dangers they pose is key. Brand owners have a role in this. They have already engaged directly with consumers through advertising campaigns and marketing events on dupes, some even offering an opportunity for consumers to swap the dupe for an original product. The same can be done with counterfeits.
Developing an anti-counterfeiting strategy that is cost effective and fit for purpose
Brands are increasingly under budgetary pressure, restricting their ability to tackle counterfeiters at scale. It’s therefore essential that anti-counterfeiting strategies are targeted, deploying the resources available in a way which has the maximum impact.
Government support and funding
The UK government has an active focus on anti-counterfeiting, as detailed in the UK IP Counter-Infringement Strategy 2022 to 2027, which aims to enhance enforcement measures, boost public-private sector collaboration and raise public awareness. Continued efforts to lobby governments on such initiatives and for greater resources to tackle counterfeits (including adequate funding for law enforcement agencies) is key.