Canadian IP voices is a podcast where we talk about intellectual property with a range of professionals and stakeholders across Canada and abroad.
In episode 6 of IP Voices, you can learn how to deal with pirate copies of products circulating in the Canadian marketplace. Lorne Lipkus, a lawyer known for effective anti-counterfeit enforcement, shares his expertise about counterfeit goods. Whether you are the owner of intellectual property or a consumer, read on for tips and best practices on how to deal with counterfeit products in the marketplace.
But what are counterfeit goods?
Counterfeit products, or pirate copies, are illegal imitations of someone else’s protected creation.
How do we deal with pirate copies of products circulating in the Canadian marketplace, and why do we need to stop them?
First, registering trademarks and copyrights with the Canadian Intellectual Property Office (CIPO) is good business practice. There are laws in Canada that protect owners of intellectual property and make it illegal to sell counterfeit products for commercial purposes in Canada. It’s the owners of the trademarks, geographic indications and copyrights that need to ensure they can prove they are the owners.
"If we talk about copyrights and trademarks, we have laws in Canada…making it illegal to sell counterfeit products for commercial purposes."
Secondly, IP rights holders can benefit from working with experts in this area, including lawyers and investigators. They will help them detect and know the best course of action if illegal copies of their products are brought into the Canadian marketplace. Best practice advises against warning serious bad actors by confronting -and thus alerting- the counterfeiter directly. However, in many cases after the investigative phase is completed it may be cost effective and recommended to address a formal legal warning known as a cease and desist letter. It educates wrongdoers by explaining the legal effect of the owner’s registered intellectual property right. The letter puts them on notice and explains why their conduct is illegal in the circumstances. Conducting a proper investigation before proceeding with a remedy can best assist you in deciding what the best course of action is in particular circumstances.
"Most counterfeit cases are resolved without the necessity of suing the counterfeiter in a court. Very often, the brand and the counterfeiter reach an out-of-court settlement."
In many cases, the company’s cease and desist letter is enough to solve the issue. However, if the counterfeiter doesn’t stop, the company may have take them to court or go to the police, or both—in addition to other available remedies, including a complaint to the Canadian Anti-Fraud Centre.
"If you've got a product that’s popular, they’re going to counterfeit it."
We can do a lot as consumers or business owners to fight counterfeits. Consumers can make a difference with simple tricks like learning how to recognize counterfeit products and knowing where to make a complaint.
"It's not as expensive as most people think to put in a monitoring program to find out and keep track of counterfeits that are being sold of your product in the marketplace."
There are inexpensive and proactive ways for any small or medium company owners to protect their business from counterfeits. They include:
Develop your own internal counterfeit awareness program
- Prepare easy-to-understand training materials that explain how to determine if a product is counterfeit.
- Reach out to law enforcement or customs so they know who you are, what your problem is and what to look for.
- Are you routinely searching and monitoring for potential infringers? Have a company representative coordinate this effort and retain outside experts only when it’s necessary.
- Have you made it clear how customers and the general public can report a suspected counterfeit product?
Seek advice from a professional
- A professional that specializes in brand protection can help you defend your IP rights.
- Do you know how to recognize a counterfeit of your own goods?
- Do your authentic products incorporate effective anti-counterfeiting technology to make it easy to distinguish your products from counterfeits?
- Know and understand your IP rights in order to establish what the infringement is.
- Learn how to stop IP theft.
- Report illegal activity.
The Canadian Intellectual Property Office offers a number of tools and provides information so you can learn about the different forms of intellectual property. For online learning resources, seminars and training, visit the IP Academy, where you’ll also find an overview of patents, trademarks, copyright, IP strategy and more!