Anti-counterfeiting
2018
United Kingdom
AA Thornton & Co
Louise Foster and Varuni Paranavitane
A Global Guide
Our attorneys provide advice on legal and enforcement
strategies to protect your brand both in the EU and worldwide.
We have a strong track record of working with Customs, law
enforcement agencies, and investigators around the world.
Our anti-counterfeiting services include:
• Building and managing anti-counterfeiting strategies
• Pursuing and taking action against online counterfeiters
• Filing and maintaining recordals of IP rights with customs globally
• Dealing with customs and police authorities around the world in
relation to suspect counterfeit goods
Find out more at: aathornton.com/services/anti-counterfeiting
Protecting your intellectual property like it’s our own
Patents
Trade Marks
Copyright
Domain Names
Design Rights
IP Litigation
Anti-Counterfeiting
IP Strategy & Audits
IP Portfolio
Management
IP Due Diligence &
Freedom to Operate
IP Transactions,
Ownership & Licensing
“The team at A.A. Thornton & Co.’s provides an
‘overall level of service that is top class’”
– Legal 500 2017
aathornton.com
United Kingdom
AA Thornton & Co
Authors
Louise Foster and Varuni Paranavitane
Legal framework
The legal framework in the United Kingdom
concerning anti-counterfeiting arises out of
both national and EU legislation.
The primary piece of national legislation
relating to trademarks in the United Kingdom
is the Trademarks Act 1994. This act contains
provisions covering trademark infringement
as well as criminal offences relating to anticounterfeiting.
The
EU
Trademark
Regulation
(2017/1001)
governs
the
unauthorised
use
of
EU
trademarks.
The
EU
Customs
Enforcement
Regulation
(608/2013)
concerns
the
customs
enforcement
of
IP
rights
by
customs
authorities.
Both
regulations
have
effect
in
the
United
Kingdom.
The
Fraud
Act
2006
and
the
Proceeds
of
and to make or possess articles for use in or
in connection with fraud, and to make or
supply articles for use in fraud.
• the Proceeds of Crime Act provides for the
recovery of assets and proceeds obtained
through crime, including IP crime, as well as
recovery of proceeds of crime through civil
proceedings where a criminal conviction
has not been possible.
Border measures
Her Majesty’s Revenue and Customs (HMRC)
and the Border Force are the UK government
authorities responsible for the UK borders,
including the enforcement of IP rights. HMRC
is responsible for national policy on IP rights
enforcement and the Border Force is the law
enforcement unit that implements this policy.
Crime Act 2002 are other pieces of national
The EU Customs Enforcement Regulation
legislation that are often relevant to criminal IP
crime cases:
• Under the Fraud Act, it is a criminal offence
to dishonestly make a false representation
with an intention to make a gain for oneself
sets out the border procedures that all EU
customs authorities must adopt to enforce IP
rights against counterfeit, infringing or pirated
goods. The Border Force implements these
procedures.
or another or an intention to cause loss to
Broadly, Border Force practice for dealing
another or expose another to a risk of loss,
with suspect counterfeit, infringing or pirated
www.WorldTrademarkReview.com
www.WorldTrademarkReview.com
Anti-counterfeiting: A Global Guide 2018 | 197
Anti-counterfeiting: A Global Guide 2018 | 197
UNITED KINGDOM AA THORNTON & CO
goods found at the UK border is as follows:
• The Border Force identifies suspect
counterfeit, infringing or pirated goods
and detains these for 10 working days
(extendable for a further 10 working days),
or three working days for perishable goods.
• The Border Force uses a standard form to
notify the rights holder and owner of the
suspect goods (eg, the importer) of the
detention and, where appropriate, sends a
sample of the goods.
• Rights holders confirm within the set period
whether the suspect goods are counterfeit,
pirated or infringing and request destruction
or release. The standard form is used to
respond to the Border Force department.
The form will have details of the specific
Border Force representative involved.
• Owners of suspect goods must confirm if
they agree to destruction within the set
time period. The Border Force will assume
implicit agreement to destruction of the
goods where no response is received from
the owner.
• If the owner contests destruction of the
goods, the rights holder must commence
legal proceedings within the set period
to determine whether an IP right has
been infringed in order to have the goods
destroyed.
holders will still need to submit an ex officio
AFA in order to have the goods destroyed.
An AFA can be requested in respect of
individual EU member states, provided that
there is an IP right applicable to those member
states. To apply for an EU-wide AFA, an
EU-wide IP right is required.
When filing an AFA, rights holders must
provide:
• details of relevant IP rights;
• details of the IP rights holder and the correct
legal and technical contacts; and
• information on how to identify when a
product might be infringing, counterfeit or
pirated.
Information on rights holders’ genuine
To aid detection of suspect goods, holders of
IP rights with effect in the United Kingdom or
other EU member states are advised to submit
an application for action (AFA) to customs
authorities. Having an AFA will assist the Border
Force in identifying suspect goods as well as
who the relevant contact is for the rights holder.
The Border Force will detain suspect goods
where there is no AFA in place; however, rights
distribution chains, places of production and
authorised distributors and importers is also
requested if appropriate.
Alongside an AFA, rights holders can
submit information to UK Customs regarding
specific shipments of suspected counterfeit or
infringing goods (a ‘red alert’) or data on new
trends relating to counterfeiting or infringing
goods (a ‘new trend’).
The IP Authorisation Unit is responsible
for granting AFAs, red alerts and new trends.
Relevant forms and details of where to send
these are available on the HMRC website.
Endorsed by the European Commission
and Europol, the Enforcement Database is
a free tool that acts as a central database
of the information usually submitted in an
AFA to aid frontline enforcers in identifying
infringing and counterfeit goods. The tool
allows direct communication between
enforcers and rights holders.
The Enforcement Database interacts
with other existing databases such as the EU
The majority of IP crime cases involve
fraudulent conduct on the part of the offenders,
so provisions of the Fraud Act are often
enforced alongside the trademark criminal
www.WorldTrademarkReview.com
198 | Anti-counterfeiting: A Global Guide 2018
AA THORNTON & CO UNITED KINGDOM
Intellectual Property Office register, TMView
and DesignView.
A useful element of the Enforcement
Database is that it can automatically generate
a completed AFA and submit this to HMRC
electronically. Manual entry by HMRC of the
AFA information is not then required. The tool
will not let a user generate the AFA until it has
sufficient information, so users can be confident
that an AFA submitted through the Enforcement
Database should be accepted by HMRC.
The information entered is secure and
access to more sensitive product details is easily
controlled by the rights holder.
Further points to note include the following:
• An IP right must be in force to be covered by
an AFA.
• Under an AFA, rights holders agree to be
liable for the costs incurred by customs
authorities in taking action to enforce IP
rights, such as costs of destruction and
storage of suspect goods.
• Rights holders are also liable where suspect
goods are found non-infringing and the
owner suffers damage.
• There are restrictions on how the
information received regarding suspect
goods detained by the Border Force can be
used by rights holders.
relation to goods or for advertising goods, or
to possess, or have custody or control in the
course of a business any such material with
a view to doing any of the aforementioned
activities; or
• make an article specifically designed
or adapted for making copies of a sign
identical to or likely to be mistaken for
a registered trademark, or possess, have
custody of or control such an article in the
course of a business knowing that it has
been, or is to be, used to produce goods or
material for labelling or packaging goods, as
a business paper in relation to goods or for
advertising goods.
The Supreme Court recently held that
Criminal prosecution
Under Section 92 of the Trademarks Act it is
a criminal offence for a person, with a view to
gain for himself or herself or another, or with
intent to cause loss to another, and without the
consent of the proprietor, to:
• apply to goods or their packaging, sell or let
for hire, offer or expose for sale or hire or
distribute goods which bear, or the packaging
of which bears, a sign identical to or likely to
be mistaken for a registered trademark;
• possess, have custody or control in the course
of a business any such goods with a view to
doing any of the aforementioned activities;
these provisions can also apply to goods that
are manufactured with the trademark owner’s
consent but sold without its consent, so they do
not necessarily concern only goods produced
without the trademark owner’s consent.
The Crown Prosecution Service (CPS) is
the public agency responsible for conducting
criminal prosecution. Police will pass cases of
offences committed under Section 92 of the
Trademarks Act to the CPS for the purpose
of bringing criminal proceedings against the
suspected offenders.
National Trading Standards is the
government authority that provides national
and local protection and enforcement of IP
rights. As well as conducting national campaigns
and gathering intelligence into counterfeiting
activity, Trading Standards has various
regional teams that work alongside the police
by carrying out a range of activities, including
routine inspections of marketplaces and
investigations into individuals and businesses.
Trading Standards is empowered to bring
criminal prosecutions themselves, issue
statutory notices and cautions, and obtain
search and seizure orders from the courts.
The Police Intellectual Property Crime
• apply a sign identical to or likely to be
Unit (PIPCU) is the specialist unit within the
mistaken for a registered trademark to
material intended to be used for labelling
or packaging goods, as a business paper in
relation to goods or for advertising goods;
• use in the course of a business material
police service tasked with tackling serious and
organised IP crime and in particular IP crime
committed online. PIPCU works with other
national government enforcement agencies
and various groups representing areas of UK
bearing such a sign for labelling or
industry to stop counterfeit trading. PIPCU
packaging goods, as a business paper in
has powers to criminally prosecute. Rights
www.WorldTrademarkReview.com
Anti-counterfeiting: A Global Guide 2018 | 199
UNITED KINGDOM AA THORNTON & CO
Louise Foster
Associate
Varuni Paranavitane
Associate
Louise Foster is a UK chartered trademark
attorney and European trademark and
designs attorney handling trademarks,
copyright and domain name cases in the
United Kingdom, the European Union and
overseas. Her practice includes trademark
clearance, prosecution both in the United
Kingdom and overseas, opposition and
contentious matters and their resolution,
as well as portfolio management and
maintenance. She has experience in handling
and resolving domain name disputes and has
managed the anti-counterfeiting measures
for a luxury fashion brand for several years,
dealing with customs and enforcement
authorities around the world. Her client
base operates in sectors such as fashion and
clothing, food and beverages, and travel, and
includes providers of software products and
solutions applied across a range of industries.
Varuni Paranavitane qualified as a UK
solicitor in 2011 and provides strategic advice
to clients in a variety of sectors – including
fashion, toys and computer games – on IP
rights such as trademarks and passing off,
designs, copyright, patents and confidential
information. She has experience dealing
with counterfeit medicinal products, and has
advised on and obtained resolution for clients
in relation to unauthorised parallel imports
of computer games into the European Union.
She has litigation experience at the UK High
Court and the IP Enterprise Court, including
preliminary injunctions. She has also advised
on commercial agreements and corporate
transactions from an IP perspective. She
has published articles on various IP topics
in journals such as Intellectual Property
Magazine and WIPR.
holders can also submit cases themselves for
consideration of investigation by PIPCU when
evidence of IP crime has been found.
Individuals and legal entities have the
right to bring private prosecutions under the
also used to recover assets and money obtained
through IP crime.
Civil enforcement
Legislative non-criminal provisions relating to
various criminal IP provisions. The CPS has no
trademark infringement are set out in Section
influence over private prosecutions.
The majority of IP crime cases involve
fraudulent conduct on the part of the
offenders, so provisions of the Fraud Act
are often enforced alongside the trademark
10 of the Trademarks Act (for UK trademarks)
and Article 9 of the EU Trademark Regulation
(for EU trademarks).
For counterfeit goods, the use of a sign
in the course of trade will normally be
criminal provisions. Where possible, the
identical to the registered trademark and in
provisions of the Proceeds of Crime Act are
relation to identical goods. This will therefore
www.WorldTrademarkReview.com
200 | Anti-counterfeiting: A Global Guide 2018
AA THORNTON & CO UNITED KINGDOM
constitute infringement under Section 10(1)
of the Trademarks Act or Article 9(2)(a) of
the Trademark Regulation. In the case of
use of an identical mark on identical goods,
the trademark owner is not required to
demonstrate a likelihood of confusion.
• permanent injunctions against future
infringement;
• orders for the infringer to pay damages or an
account of profits to the trademark owner;
• orders for the infringer to deliver up or
destroy the infringing goods; and
Examples of use of the sign include:
• costs awards in favour of the trademark
• affixing a trademark to goods or packaging;
• offering the goods under the trademark for
sale; and
• importing or exporting the goods under the
trademark.
owner.
The trademark owner may bring an action
under Section 10 of the Trademarks Act in the
Chancery Division of the High Court. Lowervalue
cases
should
be
brought
in
the
Intellectual
Property
Enterprise
Court,
where
damages
and
cost
recovery
are
capped.
For
small-value
claims,
there
is
a
separate
small-claims
track.
Before
commencing
any
legal
action,
the
trademark
owner
should
normally
consider
sending
a
pre-action
letter
to
the
infringer,
depending
on
the
remedy
sought
and
the
urgency
of
the
matter.
If
urgent
action
is
required,
in
certain
circumstances
UK
courts
can
grant
interim
injunctions
and
search
and
seizure
orders
against
the
infringer.
These
orders
can
be
applied
for
without
notice
to
the
infringer
and
granted
within
days.
An
interim
injunction
can
Anti-counterfeiting online
Counterfeit goods are increasingly sold
and distributed online. It is no longer just
auction sites and online marketplaces where
counterfeits are found, as social media
platforms are considered to have now overtaken
the use of these.
Counterfeit goods sales have also moved
into hidden closed groups on platforms such as
Facebook, making them harder to detect.
Online marketplaces, auction sites and
social media platforms all have procedures to
take down infringing content and listings of
counterfeit goods. However, the efficiency of
these procedures and scope of what content
can be removed vary between sites.
The UK government recognises the
challenge that online counterfeiting represents
today. Various national agencies are dedicated
to tackling the issue and assisting rights holders
in enforcement against counterfeiters. These
agencies work together and collaborate with
be used to immediately stop sales where:
international anti-counterfeiting initiatives to
• the case is serious;
• damages will not be an adequate remedy;
and
• the balance of convenience lies with the
granting of the injunction.
A search order will allow the applicant to
obtain access to the infringer’s premises to
search for and seize goods. These orders are
awarded only in limited circumstances. A
successful applicant for an interim injunction
will normally have to agree to pay damages to
increase effectiveness and ensure sharing of
intelligence.
Nominet, the ‘.uk’, ‘.cymru’ and ‘.wales’
domain registry, offers a domain name dispute
resolution service (DRS) that rights holders can
use to take down domain names used in relation
to online IP infringment. To use the DRS, rights
holders must submit a complaint backed up
with evidence and pay a fee. The complaint
procedure will then enter a mediation phase
to try to settle the dispute between the
complainant and respondent. Where this is not
the defendant in case the applicant does not
possible, an independent expert will decide
succeed at final trial.
If the circumstances do not warrant
urgent action, then following pre-action
correspondence the trademark owner may start
proceedings in a UK court.
the case and, if appropriate, cancel the domain
name or transfer it to the complainant.
Nominet will also suspend domain names
involved in online IP infringement in response
to requests from PIPCU.
Remedies available at the final court
The work of PIPCU has a focus on stopping
hearing on infringement are:
online counterfeit trading. PIPCU can bring
www.WorldTrademarkReview.com
Anti-counterfeiting: A Global Guide 2018 | 201
UNITED KINGDOM AA THORNTON & CO
Consumer education and awareness are
important. Providing simple channels
for consumers to alert brands to possible
counterfeit sales is useful
prosecutions and have assets seized under the
Proceeds of Crime Act.
In April 2017 PIPCU launched Operation
Ashiko, a joint initiative with the International
Anti-counterfeiting Coalition Rogueblock
programme, which works to suspend ‘.uk’
domains being used to commit IP crime.
Internet service providers (ISPs) can,
through the courts, be made subject to a
blocking order available under Section 97 of the
Copyright, Designs and Patents Act, whereby
ISPs are ordered to block websites known to
host infringing content.
The National e-Crime Team is the section
of National Trading Standards focused
on investigating online crime, including
counterfeiting and IP crime. Operation Jasper
is a major enforcement operation run by the
National e-Crime Team with the National
Markets Group targeting those using social
media to commit IP crime. The operation has
resulted in the seizure of counterfeit goods and
takedown of infringing website listings.
and organisations representing rights
holders and industries to tackle the trade
in counterfeits at physical markets and
increase consumer awareness and trust.
• The UKIPO’s Intelligence Hub coordinates
intelligence into counterfeiting and piracy
activity received from enforcement agencies
and rights holders in order to disrupt the
supply chain and trade of counterfeits.
• Trading Standards operates the Buy
With Confidence scheme, which offers
reassurances to consumers as to the
legitimacy of traders and quality of goods
and services being provided.
It is important that brands engage with and
Preventive measures/strategies
Several UK government agencies operate
initiatives aimed at tackling counterfeiting and
infringement. In addition to those discussed
above, others to note include the following:
• The Anti-Counterfeiting Group (ACG) works
with brands and their representatives,
government bodies and enforcement
assist enforcement agencies, as many can in
appropriate cases prosecute counterfeiters on
behalf of rights holders.
Brands also need to be proactive and use
the channels open to them which are made
available by these initiatives to take action
against counterfeiting.
Rights holders should ensure that they
are well placed to receive intelligence of
counterfeiting activity. Several private
companies offer tools to monitor infringing
content online, registration of domain names
containing trademarks and third-party use of
brand names on the Internet. Reverse WHOIS
searches can be used to identify patterns of
behaviour by counterfeiters.
agencies to improve intelligence sharing
An AFA by Customs and use of the
and engagement with anti-counterfeiting
efforts. ACG members receive access to
guidance on anti-counterfeiting.
• The National Markets Group, and its
Real Deal campaign, is a cross-sector
Enforcement Database will ensure that as
many shipments of counterfeits are stopped
by Customs as possible and provide valuable
intelligence.
It is helpful for rights holders to document
initiative of Trading Standards, police, the
any intelligence received regarding counterfeiting
UK Intellectual Property Office (UKIPO)
of their brands. Over time, this will:
www.WorldTrademarkReview.com
202 | Anti-counterfeiting: A Global Guide 2018
AA THORNTON & CO UNITED KINGDOM
• build a picture of the physical routes that
counterfeiters use to bring fake goods into
the United Kingdom and the online spaces
used for sales;
• inform brands of the tell-tale signs of
counterfeit goods;
identifying when their goods have been
counterfeited. Detailed guidance should
be restricted to Customs and enforcement
agencies; in the wrong hands, too much
information on how to spot a fake can assist
counterfeiters.
• create awareness of trends in the types of
goods that counterfeiters are copying; and
• help to detect repeat offenders.
Compiling guidance as to how to
AA THORNTON
distinguish a brand’s genuine goods from
counterfeits is valuable to Customs and other
enforcement agencies.
Consumer education and awareness are
also important. Providing simple channels
for consumers to alert brands to possible
counterfeit sales is useful. Anti-counterfeiting
security features that consumers know to look
out for and can verify (eg, holographic labels)
are available from some companies.
However, rights holders should be wary
of how widely they distribute guidance
-,
'
'
AA Thornton & Co
Fourth Floor
10 Old Bailey
London EC4M 7NG
United Kingdom
Tel +44 20 7405 4044
Fax +44 20 7405 3580
Web www.aathornton.com
www.WorldTrademarkReview.com
Anti-counterfeiting: A Global Guide 2018 | 203
