Protecting the precious: ten tips to protect your brand from fakes

Strong brand recognition and high value products make luxury brands a target for counterfeiters and other criminals. Premium fashion and accessories, cosmetics and beauty, 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. Simon Barker and Fiona Lawson from Freeths aren’t just experts in intellectual property, they’re co-authors of the UK chapter of the Global Legal Post’s counterfeiting guide published in association with the Luxury Law Alliance. They explain how to protect your brand from fakers.

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, or by tarnishing or diluting your brand, or if there’s a safety or other issue that the public look to you to address. We recommend an impact study to understand the problem as it relates to your brand, looking at it in a holistic way: what your business is, where it sits in the world, what you sell, factors which shape the risks for you, and sector specific obligations or regulations that affect your business.

Location matters

Look at where your manufacturing is 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.

Spot potential leaks

See where counterfeits might come out, intelligence leaks for example. 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?

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, where your manufacturing takes place and look at protection in transit territories. Consider design copyrights and patents as well as trademarks.

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.

Prevention is best

Get the right contractual arrangements in place, for example 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.

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.

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.

Enforce where it matters

Enforcement action costs, so it's important to get a return on the 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 or a reputational damage or a regulatory concern. You have to understand the risk and prioritise what matters most to your business.

Gather intelligence

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

For advice and help to protect your brand contact Simon Barker on 0345 634 2583 or simon.barker@freeths.co.uk or Fiona Lawson on 0345 128 7979 or fiona.lawson@freeths.co.uk.