Trademark Counterfeiting: What Is It & How To Avoid?

How many times have you seen someone wearing a “Abibas” or “PMUA.”

These counterfeit rip-offs of famous trademarks are taking over the markets especially in Asia causing huge revenue and reputation loss to the original brands. Further, the counterfeiting is not limited to apparel industry. It is quite prevalent in electronics, food & beverages, home appliances, and other categories as well.

Moreover, the counterfeiting of trademarks is not just limited to Asian countries. As per a recent study, around 12% UK citizens bought fake clothing, watches, and footwear. As a result, it becomes crucial for brands to take every possible measure against counterfeiting of their most valuable asset- TRADEMARK.

What Trademark Counterfeiting Means For A Brand?

Trademark counterfeiting is a type of trademark infringement where:

1. Someone selling goods or services with closely resembling or rather identical trademarks, essentially mock-ups.
2. Someone offering services to trick the audience into thinking it’s from original brand, also called as likelihood of confusion.

Consequences Of Trademark Counterfeiting

• Huge monetary losses due to counterfeit products/services sales
• Damaged market reputation if the counterfeit products are of inferior quality
• Confused market value pricing as counterfeit goods are generally available at low prices
• Erode brand’s goodwill and & loss of customers
• Litigation costs to oppose the infringer’s actions

As per some reports, counterfeiting of trademarks costs more than $200 billion dollars in USA.

What Qualifies For Trademark Counterfeiting?

Using an identical trademark without authorization of the trademark owner whose trademark is registered for the same goods or service.

Following are the conditions to prove counterfeiting of trademarks:

1. Using an identical trademark: The counterfeit trademark should look similar to the original one as registered on the official registration certificate. The similarity should be such that both the marks are substantially indistinguishable.
2. The counterfeit mark is not authentic
3. The counterfeit mark was used for the trafficking of goods or services.
4. The original trademark must be registered with USPTO. The plantiff need not to prove that the infringer was aware about the registration.
5. The registered trademark must be in use, merely registration of the mark is not enough.
6. Both the trademarks, i.e., original and counterfeit mark must be used for the same class of goods and services.
7. The counterfeit trademark causes likelihood of confusion or deceiving the customers into thinking it to be original.  

See the 45 trademark classes under NICE classification here.