Tips to minimise the infringement of your trade mark by the importation of fake products

In Uncategorized on March 22, 2010 at 10:28 am

The importation of fake consumer goods is rife the world over. The importation and sale of counterfeit goods is a growing problem in New Zealand, with the majority of counterfeit goods being sourced from overseas. Since July 2000, the number of counterfeit goods that have been detained by the New Zealand Customs Service (“Customs”) has increased by over 400%. While some may consider trade in fake products to be harmless, when the fake product is a pharmaceutical there is a serious risk of harm to consumers and the importation of other counterfeit products can damage an otherwise well respected brand.

In an interesting piece of journalistic investigation, the blatant sale of fake CHANEL handbags has been uncovered in an Auckland gift shop. Amazingly the apparently poorly made fakes sell for around NZ$ 200 and the shop owner is happy to import to order! The shop owner and person working in the shop were very free and frank with the information they provided about their activities (see the associated video).
Given the resources it has, the Customs does a sterling job in detecting and detaining counterfeit products at the border. As Customs operates on an “alert based system” it is imperative that trade mark and copyright owners lodge the request notices with Customs to enable them to detain counterfeit goods. In my experience, a high number of importers forfeit their goods to Customs thereby preventing the counterfeit goods from entering the marketplace and diluting or otherwise damaging the valuable brand.

When a trade mark or copyright border protection notice is lodged, the existence of that notice is published on Customs’ website. This acts as a notice to would-be infringers that Customs is empowered to detain any goods that they intercept and consider to be in breach of a lodged notice. Anecdotally, the mere existence of such notices, in a searchable database, deters would-be infringers.

To combat the growing rate of counterfeit products entering New Zealand, the Trade Marks (International Treaties and Enforcement) Amendment Bill (“the Bill”) proposes to include new sections in the Trade Marks Act (“the Act”) which provide Customs and the National Enforcement Unit (“NEU”) of the Ministry of Economic Development with extra resources and investigative and prosecution powers.

It is a criminal offence under the Act to import and/or sell counterfeit goods. The additional resources and powers that have been suggested under the Bill would enhance the ability of Customs and the NEU to enforce the criminal offence provisions in the Act.
I suggest that trade mark owners review their trade mark portfolio and lodge border protection notices with Customs to restrict and hopefully prevent trade in counterfeit products.


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