Tackling online sales of counterfeit goods: Tips from INTA and POF’s anti-counterfeiting team

Pre-internet, the local sale of counterfeit goods was considered a fairly limited trade – limited to shady figures in ‘Rollex’-lined coats and mobs operating from the boots of back-alley cars. Today, however, internet shopping has seen immeasurable growth in the trade of counterfeit goods. There are countless sales platforms and the breadth of product types has expanded too, from fashionwear to pharmaceuticals to car parts and more.

As a result of these sales, trade mark owners can lose revenue and market share. They can also suffer irreparable damage to brand reputation. It is therefore critical for trade mark owners to implement effective strategies to address online sales of counterfeits.

The International Trademark Association (INTA) recently published a best practices guide, titled Addressing the Sale of Counterfeits on the Internet. The guide provides trade mark owners (among other interested groups) with practical tips for addressing the online sale of counterfeit goods. Tips for trade mark owners include:

  • Preserving dated website documentation of the counterfeit goods.
  • Verifying that the supposed counterfeits are not actually genuine parallel imported goods.
  • Notifying the sales platforms of counterfeits identified.

Every business, however, requires a tailored anti-counterfeiting strategy. Phillips Ormonde Fitzpatrick offers comprehensive anti-counterfeiting services. These include:

  • Arranging for seizure by the Australian Border Force (Customs) of imported goods bearing infringing trade marks.
  • Carrying out trap purchases from online and physical stores as evidence.
  • Sending cease and desist letters.
  • Seeking compensation for the infringing activities.
  • Obtaining undertakings from counterfeit sellers to desist from the infringing conduct.
  • Obtaining details as to the supplier of the counterfeits for an upwards shut-down of the supply chain.

For more information on steps your business can take to address counterfeit sales, please contact Marine Guillou at marine.guillou@pof.com.au.

Alexis Keating - Lawyer

Alexis Keating, Former POF Attorney

LLB (Hons), BSc, (MIPLaw)

Alexis is an intellectual property (IP) lawyer and registered trade marks attorney. She practises across the full scope of IP rights, including both contentious and non-contentious matters.