How can you take action against imitation of your products?
Intellectual property rights, including trademarks, designs and patent rights, enable you to take action against imitation of your products. But how is this done?
How is it possible to act against imports of cheap imitation products from countries such as China, for example offered via Alibaba or AliExpress? The answer to this question is: it is difficult, but not impossible.
Enforcement of rights
As may be known, holders of intellectual property rights are themselves responsible for enforcing the rights they have obtained. When enforcing a right held, the holder must always consider whether the right obtained will stand enforcement, and whether the effort of enforcement of the right outweighs the benefits (less erosion of income). This is the sometimes delicate balance which has to be struck before taking action.
If the holder of an intellectual property right opts to enforce the right obtained, various means are available to keep an infringing party out of the market. Serving notice on the infringing party or recourse to law are the conventional methods of opposing infringement.
However, apart from these conventional methods, an intellectual property right holder has another available option: customs surveillance. Can you trace a supplier of an infringing product? You can request the customs authorities to take action against this supplier when it imports or exports the infringing product. This is an established method which is important, especially in the pharmaceutical industry, for keeping generic medicines out of the market in the longer term.
Of course, it is essential to provide accurate information in this context. In addition to various other requirements, information must in any case be provided to enable the customs authorities readily to identify the relevant goods. This may include information about the relevant product, the consignor and consignee (if possible), and other special features.
To save you effort, AOMB offers you the opportunity to use our Customs Surveillance service. If customs intercept a consignment of goods on suspicion of containing infringing goods, this service ensures that customs seize the goods and notify AOMB. AOMB then checks your rights, assesses the report and informs you directly. Then, in proper consultation with you, we will give you an opinion of any subsequent steps to take. One option may be to destroy the products.
What can you do yourself to prevent imitations of your products reaching the market?
Enter into agreements with manufacturers/suppliers.
The type of contract in such cases is a distribution or licensing agreement. Under a licensing agreement, you grant a third party, exclusively or otherwise, all rights of exploitation, or a single right, for example, to make your equipment, but not the right also to promote or exploit it. Anyway, the right of exploitation is a bundle of rights and you can license each component. Under a sole distribution contract, a third party cannot carry out actions which are reserved to the proprietor of the rights. The distributor can only sell the product, exclusively or non-exclusively, and this often takes place in a defined territory.
Naturally, these agreements are not made verbally, but set out in writing in appropriate contracts, with periods of notice and provisions concerning what to do if either party is in default. If, contrary to expectation, an infringement does take place, the agreement must define who can take action, and who pays for it.
Actively approach infringers
For each product which comes close to your own, in design or technology, it is advisable to draw the relevant party’s attention to their rights and possibly ask them to cease this usage. This avoids saturating the market with variants of your product with ultimate loss of your product’s own, unique character. If identical copies are being made of your product or trademark (counterfeiting), it is obviously necessary to deal with the matter with as quickly as possible, and possibly ensure, by seizure, that the copy is withdrawn from the market. A range of possibilities exist for this purpose and we will be pleased to advise you on them.
Be active on the EU borders
Requesting customs for action is a good preventive means of stopping infringing products from outside the European Union from entering. If such a customs investigation is carried out, you inform the customs authorities of the Member States about the origin and nature of your products, to enable them to intercept consignments of infringing products. An effective procedure has been set up for this purpose, and we will be pleased to explain further.
For high-end consumer goods, it is certainly worth involving special search companies which can automatically trawl websites for counterfeit products. Such a monitoring service is available on subscription, and a large number of parameters can be set so that you achieve the desired results and counter the infringement effectively.
Would you like to discuss the possibilities without any obligation?
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