Legal Strategies for Fighting Counterfeits

While technology and monitoring are essential, legal enforcement remains a critical component of brand protection. Strategic use of civil and criminal remedies can deter counterfeiters and recover damages.

Civil Enforcement Options

Trademark owners have several civil remedies:

• Cease and desist letters: Often the first step, demanding infringers stop
• Litigation: Court action seeking injunctions and damages
• Seizure orders: Court-ordered seizure of counterfeit goods

Criminal Referrals

In serious cases, criminal prosecution may be appropriate. Law enforcement agencies increasingly prioritize counterfeiting cases, particularly those involving organized crime or consumer safety risks.

Working with Customs

Customs recordation allows authorities to seize suspected counterfeits at borders. Providing training and intelligence to customs officials improves detection rates.

Marketplace Enforcement

Online platforms have their own enforcement mechanisms. DMCA takedowns, brand registry programs, and repeat infringer policies can be effective tools for removing counterfeit listings.

Building a Case

Successful enforcement requires evidence:

• Test purchases demonstrating counterfeit nature
• Documentation of trademark rights
• Records of harm to brand and consumers
• Investigation into counterfeit sources

Calculating ROI

Enforcement actions can be expensive, so prioritize strategically. Focus on major infringers and cases that will send deterrent messages to others.