Companies spend huge amounts of time, effort and resources building great products that customers actually want and recognizable brands that customers can easily spot. The more desirable and recognizable a brand, the greater the risk of counterfeiting. Anti-counterfeiting services refer to the efforts made to prevent the unauthorized use, reproduction, or distribution of counterfeit products and the unauthorized use of protected intellectual property. This can include all forms of IP, including trademarks, copyrights, patents, industrial design, geographical indicators and trade secrets. The goal of anti-counterfeiting measures is to protect IP holders’ interests, prevent revenue loss, and safeguard consumers and legitimate businesses from the risks associated with counterfeit goods.
The impact of counterfeiting on Canada and the world cannot be overstated. In Canada, IP crime poses significant challenges to the economy, public safety, and consumer trust. The proliferation of counterfeit products in the country’s markets not only harms IP right holders but also undermines confidence in legitimate businesses and brands. Moreover, counterfeit goods can pose serious health risks to consumers, while also perpetuating organized crime. Globally, the problem of counterfeiting is even more pronounced, with billions of dollars lost annually due to fake goods.
With our extensive expertise in managing online enforcement programs, market surveillance and monitoring, coordinating with different law enforcement and border protection agencies for product seizure and removal across all aspects of production, sales, and distribution, we can help you navigate global anti-counterfeiting regulatory landscapes and identify viable solutions in various jurisdictions. Furthermore, we can initiate litigation and dispute resolution proceedings to obtain court-issued restraining orders and damages to prevent the distribution of infringing products.
At MBM, we tailor our anti-counterfeiting strategies to your industry, whether you’re a luxury brand, fashion house, retailer, electronics and software company, e-commerce site, or in any other consumer product industry. We employ a robust anti-counterfeiting approach that prioritizes protecting your intellectual property, identifying and disrupting illicit market activities, and swiftly removing counterfeit products from circulation, ensuring the authenticity and integrity of your goods and your brand.
What do we provide as part of Anti-Counterfeiting Services?
- Market Monitoring and Surveillance: Ongoing monitoring of the market for signs of counterfeiting or infringement, including tracking online sales and market trends.
- Online Brand Protection, Enforcement & Domain Dispute Resolution: managing online enforcement programs to reduce counterfeit and gray market products on e-commerce sites and online seller IP rights enforcement
- Product Seizure and Removal: Assistance with seizing and removing infringing products from the market, including coordination with law enforcement and customs agencies.
- Anti-Counterfeiting Litigation and Dispute Resolution: drafting demand as well as cease and desist letters, followed by court representation in cases involving counterfeit goods, including injunctions, damages, and other relief.
- Trademark Registration and Enforcement: Assistance with registering trademarks, conducting trademark searches, and enforcing trademark rights against infringers.
- Patent Protection and Litigation: Representation in patent infringement cases, including invalidity proceedings, litigation, and settlement negotiations.
- Copyright Protection and Infringement Defence: Assistance with protecting copyrights, investigating copyright infringement claims, and defending against copyright lawsuits.
- Trade Secret Protection and Misappropriation Prevention: Guidance on protecting trade secrets, conducting trade secret searches, and preventing trade secret misappropriation.
- Due Diligence and Risk Assessment: Conducting due diligence on potential partners, suppliers, or customers to identify risks associated with IP theft or counterfeiting.
- Anti-Counterfeiting Brand Protection Plans and Policy Development: Assistance in developing policies and procedures to prevent counterfeiting, with a special focus on luxury brand protection, including anti-counterfeiting clauses in contracts and agreements.
- Training and Education: Providing training and education on IP protection, counterfeiting prevention, and anti-counterfeiting strategies for clients and their employees.
How to get started?
MBM is happy to provide the initial consultation free of charge to help you first identify your specific intellectual property needs.
Book a Consultation
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What is counterfeiting?
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Counterfeiting is the production, distribution, and sale of goods that are copied or imitated without permission from the original owner.
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What types of intellectual property are most commonly counterfeited?
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Music, movies, software, fashion, luxury goods, and electronics are common targets for counterfeiters.
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What intellectual property should be protected and can be counterfeited?
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Trademark: A word, phrase, symbol, design, or combination of these elements that identifies a product or service and distinguishes it from others.
Copyright: The legal protection of original literary, dramatic, musical, and artistic works, such as books, music, and movies.
Patent: A grant of exclusive right to make, use, and sell an invention for a specific period of time (usually 20 years).
Industrial Design: A type of IP protection for the ornamental design of a product, including its shape, configuration, and appearance.
Trade Secret: Trade secrets are valuable, confidential business information that provides a competitive advantage to a business or individual.
Geographical Indication (GI): Geographical Indicators are signs or symbols used on products that have a specific geographical origin and possess qualities or a reputation that are attributable to that origin.
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What is Authenticity Certificate?
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A document that verifies the authenticity of a product, often issued by the manufacturer or a third-party authentication service.
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What is Certification Mark?
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A mark that indicates a product has been certified by an independent organization, such as the International Organization for Standardization (ISO).
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How can I protect my intellectual property from being counterfeited?
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- Registering your intellectual property with the relevant government agencies (e.g. Canadian Intellectual Property Office)
- Implementing anti-counterfeiting measures, such as authentication protocols and packaging design that include security measures such as holograms or serial numbers
- Conducting thorough research and due diligence before partnering with others
- Consistently monitoring online marketplaces for unauthorized sales of counterfeit products.
- Engage an IP law firm that can help you with your Anti-Counterfeiting efforts.
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What are the legal steps involved in anti-counterfeiting cases?
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The process of addressing counterfeiting cases can differ depending on the specific circumstances and jurisdiction involved. However, most cases follow a standard sequence of steps.
- Investigation: The first step in tackling counterfeiting is to conduct an investigation to identify whether counterfeit products are being manufactured and sold.
- Monitoring: To stay ahead of potential infringers, trademark owners and their representatives also conduct ongoing monitoring across platforms such as online marketplaces, social media, and other digital spaces where counterfeit goods may be sold.
- Notification and Cease-and-Desist letters: if a counterfeit product is discovered, the trademark owner or their representative will typically send a formal notification to the infringing party, requesting that they immediately cease production and distribution of the counterfeit goods.
- Litigation: If the infringing party refuses to comply with the cease-and-desist letter, the trademark owner will file a lawsuit, alleging trademark infringement, copyright infringement, or other relevant infringement claims. A summons is then served on the infringing party, requiring them to appear in court and respond to the lawsuit.
- Demands for Injunction: The trademark owner may also seek that a court issue an injunction to stop the infringing party from continuing to produce and distribute counterfeit goods.
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What is a ‘Cease-and-Desist’ letter?
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A cease-and-desist letter is a formal written notice sent by one party to another, demanding that the recipient stop a specific activity or behaviour deemed unlawful, infringing, or otherwise unacceptable. The purpose of a cease-and-desist letter is to prompt the recipient to immediately halt the offending action, usually with the threat of further legal action if the request is not complied with.
The letter typically specifies the exact behaviour or activity being asked to stop, states the reason why it is unacceptable, and demands that the recipient cease-and-desist from engaging in such behaviour. Cease-and-desist letters are often used in various contexts, including intellectual property disputes. By sending a cease-and-desist letter, the sender aims to resolve the issue amicably and avoid the need for further legal action.
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What Canadian judicial courts enforce anti-counterfeiting cases?
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In Canada, the enforcement of anti-counterfeiting cases typically involves the following judicial bodies:
Federal Court: The Federal Court has jurisdiction to hear trademark infringement cases, including those related to counterfeit goods.
Superior Courts of Justice: Provincial Superior Courts have jurisdiction to hear civil cases, including trademark infringement claims, under the Trademarks Act.
Court of Appeal: The Court of Appeal has jurisdiction to hear appeals from the Federal Court and Provincial Courts.
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What is the role of Canada Border Service Agency in the context of Anti-Counterfeiting measures?
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The Canada Border Services Agency (CBSA) plays a crucial role in protecting Canadian intellectual property by enforcing laws related to trademarks, patents, and copyrights at entry points into Canada. As part of their efforts, they seize counterfeit goods and work collaboratively with law enforcement agencies and other stakeholders to identify and disrupt supply chains that bring fake products into Canada.
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What is the Canadian Anti-Counterfeiting Network (CACN)?
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CACN is a national network of organizations working together to combat counterfeiting in Canada.
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