The trademark owner’s long-term anti-counterfeiting strategy must focus on the following 3 issues:
- Product improvement to make counterfeiting harder - to at least be able to identify counterfeit products, and preferably, to be able to discourage counterfeiting. Such devices and components can be invaluable in detecting counterfeit products in intellectual property investigations. Generally, counterfeiters will not include such "extras". They can also serve to make it more difficult to copy the product. It is essential that trusted experts are kept up to date with these anti-counterfeiting devices.
- Appropriate commitment of resources – Counterfeiting of products, particularly in China, is a problem that cannot be resolved quickly. To keep the problem under control, resources must be committed from the outset to investigate and act against suspected counterfeiters. Resources cannot just be committed based on sales in China, but also must consider the potential worldwide risk from the export of counterfeit products. This is an expensive proposition but before any of the above areas of initial operation are costed, it is appropriate for the client to identify whether in principal, they agree with the strategy set out above for their intellectual property investigation.
- Long-term intelligence gathering - All intelligence gathered during anti-counterfeiting and anti-parallel import actions if relevant, must be collated and centrally coordinated to have available information concerning previous infringements in any future intellectual property investigations.
Suzzess is in a position to offer tailor-made programs for clients to meet the above objectives and to conduct investigative inquiries in an effort to locate the sources of production in major cities across China. There are essentially eight key elements as follows:
- Preliminary information: Identify for Suzzess, the current trademark and patent registration situation in the PRC for the purpose of the intellectual property investigation. Precise contact details of producers that are in China and the parameters of the agreements with them and products which they are allowed to manufacture.
- Training: Appoint a person with technical expertise of its products to liaise with Suzzess and answer all and any technical and identification questions that arise – also to meet with investigators and provide some background and training and to set up and train at least one individual in Hong Kong and one individual in China for the purposes of identification of counterfeit or genuine/modified products. This person will need to be trained to a certain level to be able to assist in civil and criminal legal proceedings, as well as to give evidence.
- Precise identification of the targets: Through informants, development of intelligence, database and statutory searches or visits on the ground. Determination through statutory searches and enquiries size, scope and connections of the target to determine whether there are connections which could cause future problems for investigation (police/military/political connections) and also to gain an insight into whether damages recovery issues are possible.
- Investigation: From the sample purchase, identify the most suitable targets for further intellectual property investigation in Hong Kong. Suzzess may require conducting a mix of surveillance, trash searches to develop sources of supply information and/or conduct certain sensitive contact enquiries for those targets identified as major suppliers with a view to determine where sources of supply in China or elsewhere. It may be that meetings are required with informants in the field and develop sources of information. The trademark owner may wish to consider an intelligence/evidence gathering exercise through set up of an undercover distributor/retail operation, to identify distributor channels, warehouses and manufacturers.
- Approach for Samples & Evaluation: Try to obtain counterfeit sample purchases direct from the target, either directly or from another country, depending on the nature and size of the operation. China undercover on-shore and off-shore approaches suspected targets with a view to obtain evidence of counterfeiting. The sample purchase would target areas where the infringing products are located, and it is anticipated that the client could give some leads to those areas. This would then be followed by a review of all information/evidence and identification of appropriate action in the PRC, including administrative, criminal or civil action depending on the scope of the problem identified and the evidence available.
- Raids & Inspections: Once a target is located in the intellectual property investigation, Suzzess can assist in liaising with the local authorities in Hong Kong or the greater PRC. We’ll take steps to arrange a raid, seize the counterfeit products, assist with documentation and obtain sanctions against the counterfeiter.
- Parallel imports/exports: If it is found that the client has a parallel imports problem in China, the keys to successful control are (1) to monitor sales by distributors and ensuring that sales do not exceed what can reasonably be sold; (2) marking of codes to identify the source of a product on the product and packaging so that the source of products can be easily identified; (3) regular monitoring of the market to identify as quickly as possible, potential sources of parallel imports and (4) use of legal tools in those jurisdictions which allow controls on parallel imports to stop the flow into those jurisdictions.
- Monitoring of the market place: Suzzess can conduct market surveys and internet monitoring to trace the origins of the counterfeit merchandise suppliers and to assess the scale of production. Additionally, we closely monitor the emergence of counterfeit goods at trade fairs and file complaints to relevant law enforcement authorities as part of our intellectual property investigation strategies.
Suzzess is in a prime position to provide advice and assistance in each of these areas. To book your consultation for an intellectual property investigation, or if you have any questions, fill out an online enquiry form here.