Book Review: Anti-Counterfeiting: Practice and Procedure

This Kat is pleased to put her paws on the book, Anti-Counterfeiting: Practice and Procedure, written by Ralph Wehrle, a solicitor with over 25 years of experience in the area. The book provides an overview of the criminal and civil law applicable in England and Wales, as well as other actions that may be taken to prevent counterfeiting.

The book is divided into seven parts. In Part I, some highlights of the trade in infringing products are provided. First, the distinction between counterfeit and pirated goods is established, recognizing that the term counterfeit “is often used colloquially to refer to any product that imitates a genuine one but has been produced and/or distributed without the appropriate authority of a rights holder”. For the author, however, “counterfeit" refers to a product infringing a trademark, while "pirated" refers to a product infringing copyright. 

Various trends in relation to the industries worst affected by counterfeiting (e.g. fashion and pharmaceutical), the source of the infringing products (such as China), and the special challenges faced in seeking to combat counterfeiting in the online environment (e.g. anonymity of infringers), are addressed in this Part. Wehrle also provides practical tips regarding intellectual property rights, contractual rights, the detection of infringing products and the steps for taking action when necessary, including those that should be prioritized in the case of limited resources. 

In Parts II, III and IV, the provisions, agencies, and proceedings are covered from a criminal enforcement perspective. Thus, in Part II Wehrle analyzes common law and statutory offenses, such as those established in the Trade Marks Act 1994 (e.g. the unauthorized use of a trademark in relation to goods), the Copyright, Designs and Patents Act 1998 (e.g. the criminal liability for making or dealing with infringing articles) and the Consumer Protection from Unfair Trading Regulations 2008 (e.g. unfair practices). 

In Part III, Wehrle highlights the powers regarding criminal investigations and prosecutions that law enforcement agency bodies enjoy, including the Crown Prosecution Service (CPS), the Trading Standards Authority (TSA) and the Police Intellectual Property Crime Unit (PIPCU). As well, it details the initial steps carried out by the agencies during a criminal investigation, such as entering premises with a search warrant. The requirements to be met regarding the gathering of evidence and pre-trial orders, such as the recovery of property and restraint orders on assets, are also addressed in this Part. 

Wehrle concludes the overview from a criminal perspective in Part IV by explaining the stages involved in the proceedings themselves, namely the first hearing (in which the defendant can plead guilty), the trial (in which the case may be dismissed or adjourned if the prosecution or the defendant fails to appear), impoundment (including the hearing, order and enforcement), the costs involved (e.g. prosecution and defense costs) and the sentencing options (e.g. fines or, imprisonment).

An overview of the civil enforcement is provided in Parts V and VI. Wehrle analyzes in Part V the statutory provisions regarding the infringement of intellectual property rights under the Trade Marks Act 1994, Copyright, Designs, and Patents Act 1998, and the Registered Designs Act 1949. Also, the requirements, advantages, and disadvantages of the common law right of passing off are addressed in this Part. 

The civil procedures and remedies are thoroughly examined in Part VI. Thus, Wehrle discusses about the court system, jurisdiction, interim applications (e.g. interim injunctive relief requesting inter alia search and seizure orders), the award of final injunctions, the assessment of damages, costs (e.g. court fees), as well as appeals from decisions given the Intellectual Property Enterprise Court (IPEC) or the Chancery Division (other than IPEC). 

Part VII of the book is dedicated to other actions that can be brought against counterfeiting, such a seizure of infringing products by the European Union and UK Customs Authorities. Highlights regarding online enforcement are also addressed, such as notice and takedown procedures, complaints to payment services providers, blocking injunctions and UDRP (Uniform Domain Name Dispute Resolution Policy) complaints.

Anti-Counterfeiting: Practice and Procedure is a detailed guide that provides valuable insights regarding the civil and criminal aspects of anti-counterfeiting practice. The author provides both in-depth analysis and practical advice regarding civil and criminal provisions and procedures, which makes this book useful for anyone involved in this field. 

Book details:

ISBN: 978 1 9998317 0 7

£99.95

200 pp

Available from The Chartered Institute of Trade Mark Attorneys here.