Case Study: Anti-Counterfeiting

We acted for a beauty start-up, which had a unique product protected by (amongst other rights) registered design rights.

Our start-up client visited a trade fair in China and found a Chinese factory was offering a cheap imitation product for sale. Through contacts in China, our client discovered that a large shipment of these imitation products was destined for England.

Before coming to Briffa, our client had taken advice from another firm, who had advised the client that it would be impossible to track down the shipment and that the client’s best option was to monitor the English market to find out where the imitation product was being sold, before sending a cease and desist letter.

Fortunately, our client also spoke with Briffa. We advised the client to instruct a specialist IP investigation company that we have worked with for over 20 years to contact the factory and find out the name of the ship that the imitation products would be on. We explained to the client if this was successful, we would be able to file a notice at UK customs relying on the client’s registered design rights. Customs would then seize the shipment and ultimately destroy it, if the importer did not take issue with this.

We also explained that from years of experience in similar cases, we had made good contacts at customs, who we could directly contact to inform about the notice and the ship carrying the imitation products. This would ensure that customs would be actively monitoring this particular case.

Based on this advice, the client instructed Briffa. Our investigators were able to discover the exact ship the imitation products were on. We subsequently contacted customs and filed the customs notice. UK customs detained the shipment and provided us with the importer’s details.

We then sent a cease and desist letter to the importer and negotiated a favourable settlement, which covered our client’s legal expenses and provided our client with valuable evidence to use in proceedings in China against the factory. More important to our client however was that the settlement resulted in the imitation products being destroyed, without being offered for sale in the UK.

Key to our client’s success here was our knowledge of anti-counterfeiting techniques and our valuable contacts that we had cultivated from acting for over 20 years in a specialised area of law.