Methods for Offline Counterfeiting Fighting

Counterfeiting poses a threat not only to brand reputation but also to consumer safety. Developing an optimal strategy to suppress the production and distribution of counterfeit goods requires qualified legal support.

As part of pre-trial dispute resolution, with the involvement of legal counsel, the right holder may use the following measures:

• Monitoring the Internet to identify offers for sale of goods bearing signs of counterfeiting, including through the use of specialized software;
• Examination of goods at retail outlets, including inspection activities carried out with the involvement of law enforcement authorities;
• Inclusion of a trademark, an appellation of origin (AO), or a copyright object (for example, product packaging design) in the Customs Register of IP Objects.

Depending on the nature and scale of the infringement, the right holder may rely on the following legal remedies:

• Filing applications with customs authorities or the police to seize counterfeit goods from circulation, with the possible imposition of fines on the infringer and their prosecution under administrative or criminal law.

However, if a pre-trial approach has not resulted in a ban on the sale of counterfeit goods, the following administrative and judicial anti-counterfeiting measures may be pursued:

• Filing a complaint with the Federal Antimonopoly Service (FAS) to obtain a decision and an order to cease the infringement, followed by bringing the infringer to administrative liability, including the imposition of fines;
• Judicial enforcement of rights using civil-law mechanisms, including recovery of compensation for infringement of exclusive rights, cessation of unlawful actions, withdrawal of counterfeit goods from circulation, and their destruction.

When choosing judicial protection of IP rights, in order to reduce the right holder’s costs and simplify the procedure, the lawyers of Zuykov and Partners recommend using the simplified procedure for filing a statement of claim. This is permissible if the amount of claims does not exceed RUB 600,000 (where the defendant is an individual entrepreneur) or RUB 1,200,000 (where the defendant is a legal entity).

Many years of practice and a significant number of successfully resolved disputes enable the lawyers of Zuykov and Partners to develop and implement effective solutions even for the most complex anti-counterfeiting cases.

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