In my previous post titled, “Assessment of Jurisdictional Public and Private IP Crime Resources,” I said, “One basic complication to assessing an IP holder’s security risks, and activating strategies to address those risks will, in part, depend on the IP protection laws and the force behind the jurisdictional (foreign and domestic) investigative units. That is why multiple strategies must be proactively established to combat a threat or actual breach when one strikes.”
In a recent newsletter article (published by a South African IP law firm) titled, “AFRICA – A land of opportunity to brand holders and counterfeiters alike,” trademark Attorney Vanessa Ferguson drives the point home. (Published on May 20, 2016.)
She says, “…the various Intellectual Property Rights protection measures available to brand holders differ from country to country and remain largely inadequate in most African countries and vary from region to region. As a result, a “ ‘one size fits all’ ” anti-counterfeiting strategy cannot be easily applied or adopted in covering the key regions and territories in Africa.”
She goes on to recommend a number of measures brand holders can implement in order to have a more effective protection strategy, such as:
- Ensure that primary trademarks are registered—not only in the main countries … but also in neighboring territories.
- Consideration should be given to the registration of the labels…to provide statutory protection.
- Brand holders should first build an understanding and knowledge of distribution and retail channels in order to infiltrate and effectively act against key counterfeit role-players
- Long-term approach…with a view to obtaining or extracting information on the source and supply of these goods.
NETWORKING ROLE FOR IP INVESTIGATORS AND PROTECTION SPECIALISTS
As I mentioned in my previous post, “…if the threat originates from a country with an underdeveloped IP protection system, rights holders are forced to develop creative ways to gather intelligence information on their own, and will, by necessity, rely on privately developed sources to meet the threat and/or track the infringers.
As IP investigations and protection specialists, it is our job to assist brand holders in acquiring this intelligence. One vital means to this end is by building and maintaining relationships with law-enforcement (and private sources) in regions where there are indicators a client’s brand is being misused. And just as thieves utilize technology to steal, and market their booty, IP investigators need to use technology to maintain contact with those on-site for the real-time exchange of information as to a brand’s misuse, and method of distribution.
ZERO-COUNTERFEITING-TOLERANCE
Ms. Ferguson emphasizes the importance of pursuing zero tolerance, “In each territory, brand holders should adopt a zero-tolerance approach to anti-counterfeiting and take action to the full extent of the law in the respective regions. The continued prosecution of offenders will not only build up a valuable precedent of case law but will also send a clear message to the market of the severity and consequences of dealing in counterfeit goods.”
Vanessa Ferguson is the head of the Anti-Counterfeiting Department at Kisch IP, an IP law firm in Sandton, Johannesburg, South Africa. Email: vanessaf@kisch-ip.com.
To read Ms. Ferguson’s article in its entirety see the attached link:
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