Anti-counterfeiting and anti-piracy
Produced in partnership with Julia Dickenson of Baker McKenzie and Catherine Woods of Baker McKenzie

The following IP practice note produced in partnership with Julia Dickenson of Baker McKenzie and Catherine Woods of Baker McKenzie provides comprehensive and up to date legal information covering:

  • Anti-counterfeiting and anti-piracy
  • Step 1—what do you know about your target?
  • Step 2—what do you want to achieve and why?
  • Step 3—how might you achieve your objectives?
  • Cease and desist/warning letter
  • Commercial business to business resolution
  • Civil action—interim relief
  • Civil action—civil proceedings
  • Criminal investigations by a law enforcement agency
  • Using customs authorities
  • More...

Anti-counterfeiting and anti-piracy

This Practice Note provides guidance on the issues to consider and steps to take when tasked with tackling identified instances of counterfeiting and piracy. Since neither of these terms have universally accepted definitions, they are used in this Practice Note to denote acts of trade mark infringement (counterfeiting) and copyright infringement (piracy) which constitute criminal offences as well as attracting civil liability. In this Practice Note, the word ‘target’ is used to refer to counterfeiters and pirates alike.

This Practice Note does not detail the statutory provisions, and associated case law, relating to infringement and the associated offences which are most typically relevant to counterfeiting and piracy. They are properly the subject of a separate Practice Note produced specifically for that purposes, see Practice Note: Anti-counterfeiting in the UK.

Instead, this Practice Note assumes the relevant infringement and/or offences can be made out and that the next real challenge faced is working out what, practically, to do about it.

The strategies and challenges associated with taking on targets who know what they are doing is unlawful but are determined to continue doing it anyway, is very different to those associated with taking on otherwise legitimate competitors who have over-borrowed elements of branding and/or copyright works for their own products and strayed into infringement territory. While a letter before action and threat of infringement proceedings is

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