Have you identified a product on the Internet, on a booth of a trade show or at one of your distributors that could potentially infringe your rights? Has one of your clients informed you that a competitor is offering something very similar to yours?
Here’s the best way to react:
Step 1 – Gather as much information as possible about this product or offer
Take screenshots of the product sheet on the website, and see if this product is sold on other platforms or websites. Do not hesitate to ask your distributor about the product’s features and origin. When this identification takes place on the booth of a trade show, take photos and interview the exhibitor to get to know them better and identify the name of the manufacturer or supplier of the offer and the origin of the product. Ask where the product or offer is available, and what territories the exhibitor is targeting.
The aim here is to get as much information as possible to estimate the likelihood of infringement of your trademark rights and, if necessary, estimate the extent of that infringement.
Step 2 – Verification by one of our IP attorneys of the infringing nature of this product or offer
On the basis of the information you have gathered, one of our intellectual property attorneys will determine whether the identified acts fall within the scope of trademark infringement, and to what extent. If you wish, he or she can also advise you on the actions to be taken and the chances of success in:
asking the infringer to cease all infringement of your trademark: we can prepare and send a cease-and-desist letter asking the infringer to cease all infringement, and possibly to compensate for the actual infringement acts. Such a formal notice can help avoid costly litigation and put the infringer on notice. This last point may be important, since for certain counterfeiting acts, it may be necessary to have full knowledge of the facts before taking legal action against the counterfeiter.
securing evidence of trademark infringement: to ensure that evidence can be used in the event of infringement, particularly in the event of legal action, it must be admissible in court. Depending on the type of evidence obtained, our intellectual property attorneys may suggest that you have a bailiff’s report drawn up on the website or at the trade show where you identified the product, or a report drawn up on the purchase of the product, or even an infringement seizure carried out directly at the counterfeiter’s premises.
taking legal action to obtain the cessation of infringing acts: if the infringer is recalcitrant and not at all open to negotiation, it may be necessary to assert your rights before the appropriate court. Our intellectual property attorneys, in collaboration with our lawyers, will be able to advise you on the chances of success of such an action, and accompany you in the steps to be taken before the court. In addition to securing the cessation of infringing acts, such an action will enable you to claim compensation for the infringing acts that have disrupted the monopoly granted by your trademark.
So, to sum up, in the event of suspected counterfeiting, we recommend that you first gather as much information as possible about the allegedly counterfeit product or offer, and then consult us quickly to determine what action needs to be taken to put an end to the counterfeiting acts.
For further information, please contact us by e-mail or telephone.
