Strong brand recognition and high-value products make luxury brands a target for counterfeiters and other criminals. This means that premium fashion and accessories, cosmetics and beauty, and even electronics and automotive brands, are at risk. And it’s not just fakes that high-end brands should be looking out for. Genuine items are often sold outside of authorised channels making them ‘grey goods’, while all exclusive brands can be victims of false websites. 

1. Know the possible impact

It’s important to understand how counterfeiting or brand abuse would affect your business. Financial loss and reputational damage are at the core, whether through loss of sales, by tarnishing or diluting your brand, or if there’s a safety or other issue that the public looks to you to address. We recommend an impact study to understand the problem as it relates to your brand as well as to view it in a holistic way. That is, what your business is, where it sits in the world, what you sell, factors shaping the risks you face, and sector-specific obligations or regulations that affect your business. 

2. Location matters 

Look at where your manufacturing is located and where the market for counterfeits of your product is. Where are the likely sales channels? Which markets do you want to protect? These interrelated questions help you understand the threat.

3. Spot potential leaks 

See where counterfeits might come out, for example intelligence leaks. What can you do in those territories to help? Look at your export and import locations: are they vulnerable in the context of grey goods? 

4. Carry out a gap analysis 

Review your existing intellectual property portfolio to make sure it protects your brand and product in the relevant territories; think about where your sales are and where your manufacturing takes place and look at protection in transit territories. Consider design copyrights and patents as well as trademarks.

5. Future-proof protection 

Build in a process so the right protections are in place before you launch a new product. Make use of the five-year grace period for trademarks to protect products that are in the pipeline. Protecting your designs early will help you defend them in case of a leak. 

6. Prevention is best

Get the right contractual arrangements in place such as nondisclosure agreements, before talking to potential manufacturers. Look at ways of controlling distributors, sales agencies and authorised affiliates. Consider technical measures like authenticity tags or holograms – these can help border staff identify counterfeit goods. 

7. Detect at the border

There is an opportunity to try to have counterfeit goods seized by customs when they cross borders. In the UK and the EU, you can apply for action (AFA) to protect your intellectual property rights (IPR) and educate border control in terms of detecting counterfeit goods. In China, you need to record your IPRs with the General Administration of China Customs. Freeths offer fixed fee packages for UK AFAs which are straightforward to replicate and file for the EU as well.

8. Watch and monitor

All brands should consider setting up monitoring services looking for trademarks, domain names and company names. Watch online marketplaces and social media. Brand protection platforms can help automate the monitoring and reduce costs.

9. Enforce where it matters

Enforcement action is costly, so it’s important to get a return on investment. Understand what the issue is and why you’re tackling it. Work out the value: is it monetary or is there a safety issue, reputational damage or a regulatory concern? You have to understand the risk and prioritise what matters most to your business.

10. Gather intelligence

Bring all of the data together to understand the bigger picture. Keep records, look for what worked well and what didn’t, and monitor your return on investment. 

In addition to being intellectual property experts, Freeths’ Simon Barker and Fiona Lawson are co-authors of  the UK chapter of the Law Over Borders Anti-counterfeiting Guide (2^nd edition) published by the Global Legal Post in association with the Luxury Law Alliance. 

For advice and help to protect your brand, contact Simon on 0345 634 2583 or [email protected] or Fiona on 0345 128 7979 or [email protected].