Targeting your investment when tackling counterfeits is the key to an effective enforcement program, as Rory O’Neill reports.
As counterfeiting increases globally and corporate in-house budgets become more and more stretched, a collaborative approach and data-driven strategy are essential to getting ahead of the problem. This, according to a panel of in-house counsel at CM01 The Cost of Combating Counterfeits: How to Maximize Your Return on a Limited Budget.
Determining where and how to allocate anticounterfeiting resources can often be among the most challenging tasks for brands, said Paola Piccoli, Head of Brand Enforcement EMEA/APAC at Maus Frères (France). As the in-house counsel responsible for tackling counterfeits for brands such as Lacoste S.A. (France), Ms. Piccoli said that the smart use of data is crucial to spending a limited budget wisely.
For the brands she represents, Ms. Piccoli employs a budget allocation system which weights different countries according to certain criteria. The criteria includes determining wwhich countries are the most significant transit points for counterfeits, and which have had the most instances of seizures of fake goods.
This approach has helped Ms. Piccoli to identify jurisdictions which may have been overlooked as priorities for investment in anticounterfeiting strategies.
Angela Wilson, Assistant General Counsel at Hallmark Cards, Incorporated (USA), agreed. “Once you rely on the data, it’s easy to get the business to buy in to your enforcement program,” she said.
There are also more “subjective criteria” at play when determining how to allocate resources, Ms. Piccoli said, especially in locations where strong relationships with local partners are key to understanding the situation on the ground.
Ms. Wilson noted that, once countries in need of greater attention as part of a wider enforcement strategy have been identified, local partnerships and intelligence are key to optimizing the investment.
It’s worthwhile for brands to work with private investigators on the ground to gather intelligence to supply to local authorities, she said.
Jennifer Dirks, Brand and IP Protection Manager at Epson America, Inc. (USA), agreed that brand owners faced with a constricted budget should take a targeted approach.
“There’s a time and a place for whack-a-mole,” she said, but to get value for money it’s important to “focus on the egregious offenders.”
According to moderator Michelle Brownlee, Trademark Counsel at Bose Corporation (USA), there are often “tough choices” to be made for brands tackling counterfeits.
Often, enforcement actions by local customs authorities may result in relatively small seizures of counterfeit products, Ms. Brownlee explained. In such cases it “may not always make sense to pay those costs to go after small amounts of product,” she said.
According to Ms. Piccoli, when faced with budget constraints in South Africa, she approached local customs authorities and explained that “we are willing to cooperate but we cannot take action [on the basis of the seizure of] two or three products”. She then established a temporary minimum threshold for seized goods beyond which her company would be able to take action.
With the rapid growth of counterfeits online, tackling the problem in a cost-effective manner can be challenging. The panel pointed to tools offered by e-commerce platforms, such as the Amazon Brand Registry (United States), and the Alibaba Group IP Platform (China), which allow brand owners to easily submit notice and takedown requests.
When faced with budgetary restrictions, Ms. Wilson noted that it’s important to remember that in-house counsel at competing brands are often struggling with precisely the same changes.
Ms. Piccoli agreed, noting, “It’s about fighting against the same enemies with your competitors.”
Epson, brands, EMEA, Lacoste, Hallmark Cards, anti-counterfeiting, Alibaba, e-commerce, customs, fake goods