BY MARK ARMITAGE
Trademark attorney, Withers & Rogers
Food and drink companies must prepare themselves to deal with the impact of counterfeit goods and be able to spot the signs of such criminal activity.
In the UK, the alcoholic beverage market is one of the worst affected by counterfeiting with 73% of all trading standards investigations being linked to the alleged sale of counterfeit alcohol. Specifically, there has been a recent rise in the number of rogue vodka drinks being sold, with some containing chemicals that could have life-threatening health implications.
To guard against counterfeiters, brand owners should stay alert to indicators such as irregular sales data or an increase in customer complaints linked to product quality. A dip in sales in a particular country could be cause for concern. If nothing else has changed, this could be a sign that someone is selling imitation goods under your brand name.
If a company becomes suspicious about fake goods reaching the market they should carry out an investigation to find out who is responsible. Businesses can seek the support of professional investigators who specialise in this area of work. They should also consider using any intellectual property rights they own to block the sale of the fraudulent goods. Businesses should also bear in mind that such activity is organised crime and it should be reported to the relevant authorities. In an attempt to stifle the goods moving through a brand’s most prosperous markets and eating away at profit margins, companies should contact trading standards or its equivalent in the country the business trades in order to make them aware.
Registered trade mark protection
It is unlikely brands will be able to stop illegal counterfeiters but they need to be prepared to tackle potential infringements head on by utilising the International Trade Mark System. To protect against counterfeiters and enforce rights in a particular country, such as China, companies must file for specific protection in that territory. It might be that fake goods are being exported and sold to a number of different countries, but without specific registrations in each location, it is unlikely that brand owners will be able to challenge such activity.
When filing a trade mark on registration for a specific product, brands must demonstrate an intent to use it commercially in a specific territory. When the trade mark is due for renewal, every ten years, the company should take steps to ensure it still fulfils any relevant criteria.
Create a “genuine article test”
Food and drink manufacturers should look to tailor their products so that customs officials can easily identify whether a product is genuine or not. For example, some vodka brands laser mark the glass bottle with a lot code, which allows manufacturers to trace a product back to source. Other ways in which a food and drink manufacturer might create a “genuine article test” is to inform customs officials about a colour test they can deploy when mixing the product with a specific solution.
Companies should also work with customers where possible to restore trust. If a customer has been sold a fake article then ask them to forward the product and aim to find out where and when it was purchased. This could be vital information and help to narrow criminal and commercial investigations.
Generate public awareness
Where public safety is put at risk due to the sale of fake goods, such as the recent case of vodka being sold in the UK containing antifreeze, consumers are more likely to be receptive to public safety campaigns. Brand owners can use proactive PR initiatives to generate awareness of the dangers posed by fake goods in their sector. This will help to deter consumers from buying potentially harmful goods and help to communicate the message that, if the price is too good to be true, then it probably is. Simple messaging such as letting consumers know the recommended retail price of the product can help too.
Broaden your contacts
A specialist trade mark attorney will hold strong relationships with native enforcement agencies. By enlisting their help, brand owners will be able to ensure they get the right type of protection required in each country and report information in a timely way to the appropriate authorities.
Companies should also keep up to speed by monitoring counterfeit movements and stay in touch with distributors and suppliers. This includes setting up regular meetings with those that have presence in the relevant countries to identify any unusual activity.
Work with online platforms
According to the Intellectual Property Annual Report, around 7m people per month visit websites offering illegal content in the UK. The internet has allowed some counterfeiters to go under the radar and move quickly across online spaces and it can be harder for law enforcement agencies to bring them down. Online auction sites such as eBay are sometimes targeted by counterfeiters and brand owners should work with such sites to prevent the circulation of fake goods online.
If a company discovers fake products on eBay, it could even be counterproductive to take legal action against the auction site itself. Companies like eBay are unlikely to be held responsible for this and food and drink manufacturers should simply report their concerns and request that the offending goods are removed from sale.
Be prepared to take action
Brands need to be prepared to take action to bring counterfeiters to justice. As well as challenging any IP infringement, companies need to liaise with criminal law enforcement agencies to pass on important information. The fight against counterfeiters is about prevention, spotting fraudulent activity and knowing how to deal with it. Ultimately this will help to block such activity and minimise the risk it poses both reputationally and commercially.
© FoodBev Media Ltd 2020