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To stamp down on counterfeiting and unauthorised products and potentially significantly benefit from it, it is vital to take action. This action may include physically making it difficult to counterfeit your product thorugh product enhancements or security tagging; and this action may culminate in criminal and/or civil prosecution against those that illegally profit from your brand. Taking advice from a legal partner who is an expert in counterfeit, fraud and unauthorised product litigation is essential. As well as helping to assess initial options & feasibility they will be instrumental in ensuring you do everything to help your eventual action.

Here are 4 key processes involved with identifying, justifying and taking action against counterfeiting and brand abuse, along with tips to help you.

It is vital to gather as much information on exactly what elements of your brand or products are being counterfeited or distributed without permission and to discover the source(s) of that abuse.

• On-line brand tracking
  • Sale of counterfeit goods; unauthorised distribution; logo/name abuse or hostility;
• Surveillance teams
  • Sale of counterfeit goods; unauthorised manufacture & distribution;
• Product assessment
  • What element is being counterfeited or abused;
• Audit supply & distribution chain
  • Over-runs; misallocation or unaccountability of materials; misreporting of sales; distribution anomalies;
• Audit asset current protection
  • Ownership of trademarks, design rights & domain names;

Convincing the FD and other key members of your organisation to act against unauthorised products can be tough but is essential in order to take action and stop the abuse. In justifying action you might consider:

• Effect on revenue - lost & potential to be made from legal action.
  • Scale & worth of ‘quality’ counterfeit or unauthorised products sold at relative price which detracted from potential legitimate sales
  • Scale & worth of lesser quality counterfeit goods which could result in damages/compensation.
• Present & potential damage to future sales and brand equity.
  • Possible effects of allowing counterfeiting or abuse to continue – e.g price erosion; consumer erosion;
• Feasibility & possible result of action
  • Counter-suing; media or consumer hostility

Several courses of action are likely to be necessary in order to deal with the issue of counterfeit and unauthorised products, both in terms of addressing the immediate problem and in terms of limiting future activity. You should consider reviewing and assessing:

• Product mechanics required to make counterfeit or supply of counterfeit difficult
  • e.g. holgographic tags, coded labels or tamperproof packaging
  • View details on holographic tags and online tracking systems by De La Rue
• Supply chain & licensing management systems & procedures
• Trademark, design rights & domain name protection strategy
• Brand & product positioning and PR and communications strategies
• Brand & product tracking and monitoring strategies
• Litigation options to acquire lost or potential revenue
• e.g. individual or group litigation against counterfeiters; sue individual director or company; civil and/or criminal prosecution

The eventual action to address your issues may be taken over many months or indeed years. Monitoring and reviewing your success and on-going action is paramount. This may include:

• Product changes/enhancements
• Keeping up to date with technological advancements & counterfeit capabilities
• Revising supply chain & licensing management systems
• Regular auditing; procedures for accountability; integrated systems & alert mechanisms
• Trademarks, design rights & other protection sought & maintained
• Accounting for trade market expansions; new domain name options
• Tracking & monitoring systems implemented
• Communication campaigns to consumers/influencers
• Repairing and potentially enhancing brand reputation & desirability
• Litigation
• Criminal and/or civil