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Protecting your brands, monitoring the market and enforcing your rights across the world

Effective anti-counterfeiting strategy that meets your commercial requirements

Counterfeiting activity is costly and causes reputational damage to brands. This problem is by no means limited to luxury and well-known brands, counterfeiting activity regularly results in loss of sales and reputational damage for SMEs too.

However, brand owners can take strategic, quick and cost effective steps to address this and prevent infringing products from even reaching the market. It is possible to engage law enforcement authorities to enforce rights on brand owners’ behalf and use dedicated IP right complaint mechanisms to remove fakes advertised online.

Marks & Clerk has a team of experts able to provide you with a dedicated anti-counterfeiting strategy to address this threat by taking steps to Protect your IP, Monitor the market for counterfeiting activity and Enforce your rights to remove counterfeit products from the market.

Protect

As IP law specialists we will help you to protect your brand; we can:

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  • Advise on strategy for protection of your IP to support anti-counterfeiting actions
  • Register IP in territories of interest for maximum impact in respect of enforcement
  • Register IP with customs authorities in key international markets so they can seize counterfeit goods for you

Monitor

We can help you monitor the marketplace to pick up infringing activity, in particular we can:

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  • Leverage our network of law enforcement and specialist investigator contacts to engage them in monitoring to pick up clients’ brands in the marketplace
  • Train law enforcement in spotting counterfeits and advise on where fakes are coming from
  • Put in place online content monitoring programmes to pick up infringing goods sold online
  • Regularly monitor online marketplaces to pick up potentially counterfeit goods listings
  • Monitor for third party attempts to register your trade mark rights

Enforce

To ensure counterfeit goods are removed from the market we can:

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  • Support law enforcement organisations by providing expert statements confirming goods are counterfeit
  • Work with law enforcement and investigators to instigate criminal proceedings against counterfeiters
  • Conduct IP Right take down complaint actions against counterfeit product listings
  • Conduct IP Right complaints against infringements in websites, domain names and social media platforms
  • Take coordinated legal action against infringers through our team of litigation specialists

Specialists

for the result you need

Photo: Kirsten Gilbert

Kirsten Gilbert

Partner and Head of Brand Exploitation, Protection and TM Litigation UK Solicitor (UK)
Kirsten is a Partner and Head of Brand Exploitation, Protection and TM Litigation UK at Marks & Clerk Law. Kirsten advises in a broad range of sectors including food & drink, financial services, pharmaceuticals, fashion and creative industries.

Catherine Lovrics

Partner, Head of Trademarks and Copyright (Canada) Canadian Trademark Agent, Barrister and Solicitor
Catherine (Cat) Lovrics is a Partner at Marks & Clerk Canada, where she is Head of the firm's Trademark and Copyright Groups
Photo: John Ferdinand

John Ferdinand

Partner Registered and Chartered Trade Mark Attorney (UK)
John has over 15 years’ experience in the trade mark profession and works with a portfolio of national and international clients on developing a strategy for their trade mark protection. John is the Office Managing Partner at Marks & Clerk's Birmingham office.
Photo: Xuefang Huang

Xuefang Huang

Partner PRC Lawyer, New York Attorney
Xuefang advises on intellectual property law with a focus on all aspects of trade mark law, copyright law and related laws of PRC, including transactional work, disputes, IP due diligence, enforcement of rights, customs recordation, cybersquatting, unfair competition and litigation.
Photo: Katherine Lai

Katherine Lai

Partner Solicitor (Hong Kong)
Katherine possesses in-depth experience in global brand strategy and trade mark portfolio management, including conducting trade mark audits, clearance searches, prosecution and enforcement of trade mark rights. Experience also in Hong Kong & China anti-counterfeiting campaigns, Customs Office actions, domain-name disputes, copyright and/or trade mark infringement actions, passing off actions in Hong Kong or anti-unfair competition claims before the China courts.
Photo: Noëlle Pearson

Noëlle Pearson

Senior Associate Registered and Chartered Trade Mark Attorney (UK), South African Qualified Attorney/Lawyer (non-practising)
Noëlle specialises in intellectual property law, with a strong focus in trade mark contentious and non-contentious matters.
Photo: David Kemp

David Kemp

Senior Associate Registered and Chartered Trade Mark Attorney (UK)
David advises on all aspects of UK and international trade mark law and practice in a wide range of sectors, with particular expertise in the medtech, fashion and retail, food and drink and financial services industries.
Photo: Megan Rannard

Megan Rannard

Associate Registered and Chartered Trade Mark Attorney (UK)
Megan graduated with a first class Honours degree in Law from the University of Kent in July 2017. She joined Marks and Clerk in the Birmingham office in September 2017 and qualified as a Trade Mark Attorney in August 2021.
Photo: Erik Rõuk

Erik Rõuk

Associate EUIPO Professional Representative, Registered and Chartered Trade Mark Attorney (UK)
Erik is a Chartered Trade Mark Attorney and EUIPO Professional Representative involved in the registration, protection, enforcement and management of UK, EU and International Trade Marks. Erik has assisted clients in seeking protection for designs applicable to both physical and virtual worlds and industries ranging from computer games to food and drink and fashion.

We have you covered

Wherever you are in the world and whichever markets you plan to move into

According to recent figures 75%+ of counterfeit products seized in the EU originate from China & Hong Kong – we have specialists located in both territories as well as in Luxembourg, Singapore, Malaysia, Canada and the UK so are well placed to prevent the export and import of counterfeit products in key markets.

You may already handle some anti-counterfeiting actions in-house. We can complement this by handling other actions for you saving management time. We can also offer a single point of contact for multiple jurisdictions and provide fixed or capped pricing to help manage budgets and maximise return on investment.

Physical anti-counterfeiting services

Counterfeit goods appearing in physical marketplaces present a clear reputational risk to brand owners. In normal IP infringement scenarios brand owners need to instigate enforcement actions themselves, where counterfeit goods are concerned it is possible to engage law enforcement authorities to enforce rights and remove counterfeit goods from the market on brand owners behalf.

We can support you by recording IP rights with customs authorities to stop goods from entering the marketplace and leverage our network of contacts in law enforcement to engage them in taking action to seize counterfeit goods identified on the ground. This can include training in how to spot counterfeit goods and sharing intelligence on where fakes are coming from.

To protect you against counterfeit goods appearing in physical marketplaces, we can:

Protect

  • Audit your IP protection to assist in physical monitoring and enforcement activities
  • Put IP protection in place to enable you to engage law enforcement in seizing counterfeit goods
  • Record your IP rights with customs authorities in key territories of interest.

Monitor

  • Train law enforcement officers in how to spot counterfeit goods including by preparing specialist guides and engage
  • Provide law enforcement authorities with intelligence on where counterfeits are coming from.
  • Work with investigators to conduct regular reviews of marketplaces.

Enforce

  • Provide expert statements and evidence to support seizures of goods by law enforcement.
  • Assistance with test purchases of suspected counterfeit goods;
  • Support in wider enforcement activities (such as, work with investigators to instigate private criminal prosecutions, company name and domain name complaints and traditional enforcement of IP rights in the local courts).

Online anti-counterfeiting services

A significant proportion of the counterfeiting market consists of counterfeit products sold on online marketplaces, such as Amazon, eBay and Alibaba, and increasingly on social media platforms. This can result in:

  • Damage to your brand and reputation;
  • Loss of sales;
  • Risks to the health and safety of consumers.

If you use online marketplaces or social media to sell your products or services, have plans to do so, or offer products or services that could be imitated on these platforms, we can help you take action to address counterfeit or copycat activity online.

Online marketplaces and social media platforms have dedicated IP complaint mechanisms and schemes to assist brand owners in tackling infringement online. We can assist with monitoring for potentially infringing third party activity and filing complaints with the relevant platforms to arrange for this to be removed. We can also put in place IP protection to address these issues and to support your enrolment with schemes such as the Amazon Brand Registry.

To protect you against counterfeit goods appearing in online marketplaces, we can:

Protect

  • Audits of IP protection to assist in online enforcement according to platform requirements worldwide
  • IP registration for enrolment with the Amazon Brand Registry and similar schemes

Monitor

  • Regular monitoring of online platforms
  • Online content monitoring and trade mark watching service

Enforce

  • Knowledge of requirements for enforcement on major platforms including online marketplaces, social media and search engines
  • Tailored enforcement strategies and filing of complaints for the removal of infringing activity

For customs and law enforcement officers

Law enforcement officers play a crucial role in combating counterfeiting activity. We have a dedicated, centralised team routinely handling anti-counterfeiting matters and aim to respond to all law enforcement inquiries received within 2 working days. We can also work to meet deadline requirements for providing evidence where needed - to contact us concerning any suspected counterfeit goods seized please email us on anticounterfeiting@marks-clerk.com.

We are also happy to offer dedicated brand-focused training sessions for customs, law enforcement and Trading Standards officers on request.

Latest Insights

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News
- Monday, 29 July 2024

Is Paris the summer’s city of knock-offs? Marks & Clerk anti-counterfeiting expertise featured on BBC Radio Lunchtime Live

Paris, the host of the 2024 Olympics and a hub for the world's luxury goods markets, will be seeing an influx of tourists over the next month. This surge presents prime opportunities for the city's bustling counterfeit market. Marks & Clerk Partner, John Ferdinand, spoke to BBC Radio about the concerns surrounding counterfeit goods during big events like the Olympics, highlighting the importance of education and action needed to protect both brand reputation and the public. 
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Article
- Friday, 31 May 2024

Case Study: Counterfeiter of SIEMENS Ordered to Pay 100 Million Yuan in Damages

In a lawsuit filed by Siemens AG against Ningbo Qishuai Electrical Appliance Co., Ltd. and four others for trademark infringement and unfair competition involving the trademark "西门子" (Siemens in Chinese), the Supreme People's Court found the defendants guilty on both counts. The defendants refused to submit any financial data, but the Court imposed 100 million yuan (Approx. USD 13.8 million) in damages.
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EU GB flags
Article
- Wednesday, 24 April 2024

Exhaustion of Rights and the Retained EU Law (Revocation and Reform) Act 2023

Before Brexit, once goods had been legitimately placed on the market anywhere in the EEA, any applicable IP rights, such as registered trade marks, were “exhausted” so that the rights holder could no longer restrict further dealings in those specific goods anywhere in the territory (unless there were circumstances where the condition of those goods had been tampered with, for example).
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We're proud to be a part of:

The Anti-Counterfeiting Group

The ACG is recognised as one of the most active and highly respected international organisations in the fight against counterfeiting.

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