11 Sep Fighting Counterfeit Products
Today’s post is by Geraldine Rimmer ([email protected]) who, I’m very pleased to announce, has recently joined us here at Michael Buck IP and who is a specialist trade mark practitioner. Geraldine recently helped a client deal with a person who was systematically copying the client’s product.
Imagine the shock you’d experience if you discovered that every aspect of you product’s packaging – the artwork, the product name, your name, the bar code and the place of manufacture – was being copied without your knowledge.
Imagine the distress you’d further experience when you discover that many of your existing clients were purchasing the counterfeit product thinking you were the manufacturer.
After you’d recovered from the initial shock, you’d want the manufacture and sale of the counterfeit product – a product which was cheaper and of poorer quality than yours – to stop. But how?
I dealt with such a situation recently. It involved distilling the issues down to legal principles and identifying available grounds for recourse – copyright infringement, trade mark infringement, breach of the Australian Consumer Law and the common law tort of passing off – in a methodical manner.
Addressing all of these issues involved doing research to determine the extent of the financial damage suffered and the extent the counterfeit product was confused with the original. It also involved preparing confirmatory Deeds of Assignment to ensure that a copyright infringement action could be brought. Interestingly the case also involved liaising with Customs to prevent the importation of the counterfeit products and organising collection of evidence in general.
With all the extensive behind-the-scenes work done the client and I sat down to discuss the next steps and the prospects for success. The client asked me to go ahead and I instructed a specialist intellectual property solicitor and barrister to commence proceedings.
After proceedings commenced, I acted as the intermediary between my client and the solicitor and barrister we had engaged in Melbourne.
I’m pleased to report that my advice coupled with the behind the scenes work and the specialist skills of the solicitor and barrister had a successful outcome – financial compensation and the cessation of the production, sale and importation of the counterfeit products.
So, if your product is being slavishly copied by an unauthorised third party there is hope! Please get in touch if you need help with any of your trade mark matters.