Intellectual Property and Counterfeiting

Trade in counterfeit products has staggering financial implications for businesses. It costs the UK economy billions of dollars a year in forgone company sales, overpriced products and tax revenues.1

Trade in Counterfeit Products and the UK economy2 estimates the value of counterfeit and pirated goods imported to the UK were worth GBP 13.6 billion in 2016, equivalent to 3% of genuine imports, and up from GBP 9.3 billion in 2013. The most common imported fakes include mobile phones and accessories, clothes, footwear, handbags, and games. This fake trade led to estimated forgone sales by UK businesses of GBP 9.2 billion, or 2.7% of total sales in the wholesale and retail sector.

The report estimates the value of counterfeit and pirated British goods sold worldwide at GBP 16.2 billion in 2016, up from GBP 13.4 billion in 2013 and equivalent to 3.3% of UK manufacturing sales. UK goods particularly targeted by counterfeiters include perfumes, cosmetics, clothing, footwear, leather goods, telecoms equipment, electronic goods, cars and motorbikes.

Counterfeiting causes financial harm to companies 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 to protect must consider seriously.

Trade Mark Offences

A trade mark 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. 

Private prosecutions can be used as an effective tool – against large or small targets – to combat the ever-increasing counterfeiting of goods and subsequent financial loss to companies. At Edmonds Marshall McMahon, we regularly prosecute offences under the Trade Marks Act 1994 (“TMA”), in particular, the unauthorised use of trade marks in relation to goods under section 92 TMA, to which specific enforcement responsibilities are attached.

Consideration is given to confiscation proceedings against convicted defendants in addition to the forfeiture of goods or materials connected with ‘relevant’ offences and deprivation orders where necessary.

Registered Design Infringement

The Intellectual Property Act 2014 criminalises the infringement of registered designs and allows intellectual property owners to defend their property. Designers are increasingly turning to private prosecutions to protect their rights as intellectual property crime is overlooked by traditional law enforcement agencies.

Freedom of Information Requests in 2018 to i) the Intellectual Property Office, ii) the Crown Prosecution Service, and iii) the City of London Police (who have pioneered the specialist Police Intellectual Property Crime Unit (PIPCU)), revealed that none of these organisations had commenced a criminal investigation into or prosecution of design infringement.

At Edmonds Marshall McMahon, we work with some of the most experienced intellectual property crime investigators in the country to ensure an effective, compliant and successful investigation.

We also assist our clients to present ‘prosecution ready’ cases to state agencies such as, the Police Intellectual Property Crime Unit, for prosecution.

Tobacco and Related Products Regulations 2016

Edmonds Marshall McMahon has conducted a number of prosecutions under the Tobacco and Related Products Regulations 2016 which came into force in May 2016. These regulations deal with the manufacture, presentation and sale of tobacco related products, including herbal products for smoking, e-cigarettes and refill containers as well as smokeless and novel tobacco products.

The Regulations include, for example, minimum sized health warnings on tobacco packaging, standardised packaging, restrictions on tobacco content in e-cigarettes and their refills.

Examples of recent prosecutions include:

  • acting for Tobacco companies investigating and prosecuting large scale national conspiracies to distribute illicit tobacco products;
  • acting for Tobacco companies where there have been infringements of their intellectual property together with breaches of the strict liability health warning;
  • acting for E-cigarette companies investigating and prosecuting offences under the Regulations for excess nicotine content in products purporting to be manufactured by them. 

[1] https://www.oecd.org/governance/trade-in-counterfeit-goods-costs-uk-economy-billions-of-euros.htm
[2] https://www.oecd.org/governance/trade-in-counterfeit-goods-costs-uk-economy-billions-of-euros.htm

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