Protecting products from counterfeiting - attack is the best defence
By Peter Lowe, Assistant Director, ICC Counterfeiting Intelligence Bureau
London, 6 March - It was the distinguished Prussian General Von Moltke who first coined the term "attack is the best method of defence" for a military strategy that has been used throughout history. The wisdom that underlies the approach should equally be applied on the commercial battlefield when protecting intellectual property rights.
No battle-scarred anti counterfeiting warrior would question the need for a proactive policy. Counterfeiters will simply not desist from a very profitable activity unless they are compelled to do so. Some may stop after receiving a straightforward "cease and desist" letter from the rights owners' lawyers. More often though search and seizure of counterfeits, followed by litigation and publicity is required. Even then, some hardened counterfeiters may still not give up.
In testing the resolve of rights owners, counterfeiters will quickly establish just how serious their victims are in protecting their rights. If a victim company is persistent and relentless in enforcing its rights, the chances are that the counterfeiter will decide to look for a softer target elsewhere and copy another company's products. As Jack Stone the owner of the well known Umbro sportswear brand is quoted as saying "a brand is o
nly valuable if you are prepared to spend money on protecting it". This implies that if brand owners take insufficient steps to protect their brands and allow counterfeiters free rein, the value of the brand will rapidly become eroded. Indeed huge sums of money may be put at risk in terms of lost sales by not defending key products.
The cost of protecting a brand from infringement can be considerable. At one end of the spectrum the international music, software and motion picture industries spend millions of dollars on anti piracy activities.
Other companies spend rather less, Malden Mills Industries Inc a large US based fabric company recently estimated that they spend $500,000 annually. This amount includes the salaries of two full time lawyers and a full time clerk who scans advertisements around the country to make sure that companies are not using its trademark improperly.
Some companies spend very little either due to ignorance of the long term impact of counterfeiting on their business or because they are small have limited resources and simply cannot afford the time or expense of running an anti counterfeiting campaign.
Litigation can be very expensive in some jurisdictions. In the US the American Intellectual Property Law Association currently estimates that the average cost of taking a trademark infringement case to trial amounts to $249,000. However many cases are settled without recourse to the courts and other less expensive anti counterfeiting strategies such as using the criminal law are available.
ICC Counterfeiting Intelligence Bureau
ICC Commission on Intellectual Property