Intellectual property (“IP”) is a category of property that includes intangible creations from the human mind – such rights can exist in a song, design, brand or invention (among other things). The most well-known IP rights include copyrights, patents and trademarks. As you may know, a trademark is any sign which can distinguish the goods and services of one trader from those of another – it is closely associated with business image, goodwill and reputation. Under the criminal law, use of these rights without the owner’s permission can amount to a criminal offence.
IP crime may not leave a person battered or a home raided, but it penetrates all areas of society and has staggering implications for businesses. Indeed, trade mark offences (otherwise known as counterfeiting) cost the UK economy billions of pounds each year in forgone company sales and tax revenues. In 2019, the Organisation for Economic Co-operation and Development (“OECD”) published a report entitled Trade in Counterfeit Products and the UK Economy. The OECD report estimates that in 2016 counterfeit and pirated goods imported to the UK were worth £13.6 billion, equivalent to 3% of genuine imports. The most common imported fakes include mobile phones, clothes, footwear, handbags and games. This fake trade led to forgone sales by UK businesses of over £9 billion in 2016, amounting to 2.7% of total sales in the retail sector.
Private prosecutions are an effective tool – against large or small targets – to combat the ever-increasing counterfeiting of goods and the resulting financial loss to companies. Edmonds Marshall McMahon has a wealth of experience prosecuting offences under the Trade Marks Act 1994 (the “Act”) – indeed, we regularly bring proceedings under section 92 of the Act, which covers the unauthorised use of trade marks in relation to goods. As part of these prosecutions, we consider confiscation proceedings against convicted defendants, as well as the forfeiture of goods or materials connected with “relevant” offences.
Counterfeiting has serious implications for UK businesses and the Exchequer – it causes reputational damage, is credited with funding organised crime and has health and safety implications. It is a problem that all companies with a brand must consider seriously. Edmonds Marshall McMahon has extensive experience in the protection of IP rights and we consider private prosecutions to be an invaluable tool in the fight against counterfeiting, which has grown hugely in the last decade.
