Many brand owners are aware that they can bring civil law claims to stop others infringing their intellectual property rights (“IP Rights”). However, such claims are expensive and time consuming and almost always leave the IP Rights owner out of pocket even if the Court finds in their favour, due to the rules relating to recovery of legal costs from the losing party.
Using criminal law to tackle intellectual property infringement
What is less well known is that the infringement of IP Rights often also constitutes a criminal offence under English law and that, in certain circumstances, the IP Rights owner can prevent infringement by collaborating with UK law enforcement agencies, such as Border Force and the Police and Intellectual Property Crime Unit (“PIPCU”).
The UK Intellectual Property Office (“UKIPO”), together with HM Revenue and Customs (“HMRC”) and Border Force, has published its first post-Brexit review of IP Rights enforcement at UK borders for the period of 2021 and 2023.
Preventing counterfeit goods at the UK border
During that period, counterfeit articles with a retail value of over half a billion pounds were seized at the UK border by Border Force. The report highlights the value for IP Rights owners in collaborating with Border Force to protect their brand and products from reputational and financial damage caused by the import and sale of illegitimate goods.
To obtain this protection, the owner of the IP Rights in question (whether rights in trade marks, copyright, designs or patents) may submit an Application for Action (“AfA”) to Border Force which informs them of their existence and enables Border Force to seize goods suspected of infringing those rights. Once Border Force starts to monitor the import and export of potentially counterfeit goods, they will contact the IP Rights’ owner to check whether seized goods are genuine or not to ensure that genuine goods are not unnecessarily intercepted. When preparing an AfA, the IP Rights owner has the option of informing Border Force of any approved suppliers.
One of the key advantages of submitting an AfA is early intervention. Instead of discovering counterfeit products after they have entered the market, Border Force can intercept them before they reach distributors, retailers, or consumers. This proactive approach can limit financial losses and prevents reputational damage caused by substandard or unsafe counterfeit goods. This is especially important in sectors such as electronics, cosmetics, pharmaceuticals, automotive parts, and food-related products, where safety risks to consumers and reputational damage to the IP Rights owners are high.
Working with law enforcement to protect your brand
At Clarion, we have extensive experience in collaborating with Border Force (both in the UK and the EU) to help protect our clients’ brands and reputation.
We have also successfully worked with PIPCU in relation to counterfeit goods which have been imported into the UK, resulting in PIPCU seizing counterfeit goods from the infringer’s warehouse before they were put on the market.
If you have any questions about protecting your intellectual property and would like to talk to someone about it, please contact our IP Team.