Global Experts Outline Effective Anti-Counterfeiting Strategies for Brand Owners

Counterfeiting remains a critical challenge for brand owners globally, threatening not only financial interests but also corporate reputation and consumer trust. Addressing this multifaceted issue requires a nuanced approach that accounts for both global dynamics and local legal frameworks.

A panel of practitioners from China, Russia, the United States, and Ukraine recently shared their perspectives on practical anti-counterfeiting strategies. Ai-Leen Lim of AWA Asia (China), Dmitry Sando and Nina Moshynska of Gorodissky & Partners (Russia and Ukraine respectively), and Harley I Lewin of McCarter & English (United States) outlined key components for rights holders to consider when constructing an effective action plan.

Ai-Leen Lim emphasized the importance of defining primary goals upfront. On the supply side, objectives may include deterrence through securing favorable judgments or tracing counterfeit sources to disrupt production. On the demand side, strategies might focus on shifting consumer preference towards authentic goods via education. Lim also highlighted the need for rights holders to decide whether anti-counterfeiting efforts should be self-funding, such as converting counterfeiters into licensees.

In China, Lim noted that securing comprehensive IP rights early—including trademarks across relevant classes and applicable patents—is essential. These rights must be registered with Customs and communicated to local authorities such as the Administration for Industry and Commerce (AIC) and the State Technical Supervision Bureau (TSB). Establishing robust monitoring systems to track infringement sources and IP squatting, along with clear legal protocols, is critical for an effective program.

Dmitry Sando outlined Russia’s foundational measures, which include registering and maintaining IP rights and ensuring their inclusion in the customs register. He stressed the value of reliable tools to track counterfeit and online infringements, as well as cultivating strong relationships with enforcement agencies to receive timely alerts and understand enforcement approaches. Sando also recommended active public relations campaigns and local enforcement actions to bolster protection, noting that compensation awards can help offset enforcement costs.

Harley I Lewin described the United States approach as centered on the “three As”: Acquire, Analyse, and Act. This involves acquiring IP rights and liaising with law enforcement, analyzing intelligence to determine appropriate responses, and acting through a spectrum of measures ranging from warning letters to civil and criminal proceedings. Lewin highlighted the shift from traditional retail and warehouse counterfeiting to online platforms, including social media sites, as a significant trend.

Nina Moshynska detailed Ukraine’s framework, emphasizing the creation and development of an IP portfolio, informing enforcement authorities about points of contact for IP infringements, and educating the public on counterfeit risks and identification. She stressed regular market monitoring, pre-trial measures such as warning letters and negotiations, customs border protection, and pursuing administrative or criminal prosecution. Moshynska also noted the importance of leveraging unfair competition laws and court proceedings.

Regarding enforcement agencies, the panelists underscored collaboration as vital. In Russia, key bodies include the police, Customs, the Federal Anti-monopoly Service (FAS Russia), and the courts. Sando pointed out that rights holders must actively initiate cases, as many infringers evade punishment due to inaction. Customs has limited timeframes to act on IP infringements, making prompt responses essential.

In Ukraine, enforcement agencies encompass the police, Customs, Fiscal Service, anti-monopoly authorities, and consumer protection agencies. Moshynska emphasized cooperation with police and Customs to track counterfeits at the border and take legal action before goods enter the market.

Lim highlighted challenges unique to China, such as factories producing counterfeits within local communities, local protectionism in lower-tier cities, and widespread bad-faith trademark registrations by squatters. The rise of online counterfeiting further complicates enforcement efforts.

Lewin identified two major trends in the US: the migration of counterfeit sales from physical stores to online marketplaces, and more recently, to social media platforms. He recommended registering trademarks with Customs and educating them about counterfeit goods to enhance border enforcement. Local police and state consumer protection agencies often provide responsive enforcement, while federal agencies like the FBI and US Postal Service focus on larger cases.

Overall, the experts agree that a successful anti-counterfeiting strategy requires a combination of early and comprehensive IP registration, active monitoring, strategic enforcement actions, cooperation with authorities, and consumer education tailored to local market conditions.