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Anticounterfeiting

Whether trying to put a stop to the distribution of pirated software or counterfeit pharmaceuticals, or preventing the sale of fake versions of fashion designs in retail and department stores and in e-commerce, anticounterfeiting is a key concern for businesses trying to protect their intellectual property.

We assist clients in all aspects of developing and implementing global enforcement strategies to protect their trademarks and domain names from counterfeiting. We have successfully represented a wide range of traditional and nontraditional businesses including software and internet companies, internationally renowned fashion houses, consumer goods manufacturers and diversified technology firms. We have also prosecuted service mark and trademark infringement and counterfeiting actions on behalf of such diverse organizations as a global media company, an NBA basketball team, a nonprofit educational organization and a leading Las Vegas hotel and casino.

Protecting intellectual property rights often requires the ability to move quickly to seize and impound counterfeit goods and to obtain injunctive relief against infringers.

We work closely with law enforcement agencies around the world to deal with counterfeiting, trademark rip-offs, parallel importation problems and unfair competition. We employ watching services in all markets of interest to our clients in order to ensure the earliest possible notification of unauthorized uses or registrations, and we act swiftly to oppose, cancel or negotiate assignments of unauthorized registrations.

Why Choose Us

Ranked as one of the top 15 global law firm platforms in the world by Law360, our presence on five continents enables us to quickly address your global or regional IP enforcement needs.

  • With 46 offices in 21 countries, our team of lawyers provides a fully integrated practice to fight counterfeiting in virtually every corner of the world, with a strong focus on China, Europe and the US.
  • We combine comprehensive international experience with essential knowledge of local market practice to advise on legal matters in most places around the globe.
  • Our industry experience includes luxury and consumer goods, automotive, industrial commodities, chemical products, medical devices and software
  • Our IP experience, combined with the ability to handle litigated cases and all forms of dispute resolution, enables us to assist businesses by protecting and enforcing their IP rights, not only in civil, but equally in criminal and administrative proceedings, including customs measures.
  • We give clients access to the resources of a top-ranking global law firm with local business and cultural connections in countries where our offices are based. Our lawyers take a dynamic approach to meeting clients’ needs for creative and responsive counsel in areas having the most significant impact on business in Asia Pacific, Europe and the US.

Our teams in Asia Pacific, Europe and the US cooperate with regional, national and supra-national investigation authorities in all types of criminal and administrative investigations against known and unknown subjects, with the aim to protect the IP rights of our clients, to enforce their civil claims, including damages, and of criminal punishment. Our investigation experts are fully integrated in our IP practice, to create a powerful team as interface between IP protection and enforcement.

Europe

Our European team regularly initiates ongoing EU-wide market surveillance, supervises customs authorities throughout the search, seizure and confiscation of counterfeited products, and has a unique experience in strategic IP litigation before national and European courts, as well as arbitration tribunals. The IP expertise generally covers a multijurisdictional environment in any form of civil and criminal actions against counterfeiters, including criminal investigations of national and European investigation authorities such as EUROPOL. Our preferred focus is on preliminary injunctions to safeguard our clients’ interests in urgent matters. We have obtained landmark decisions on behalf of our clients in cases of infringing design imitations and others. We also advise our clients in pan-European customs measures and represent them in criminal prosecution matters against counterfeiters.

China

Our anticounterfeiting practice in China is unique among global law firms. Our capabilities are rooted in our unique China team. Comprised of China-based foreign lawyers and Chinese IP litigators and investigation/analysis experts, we serve many different industries, including automotive, fashion and other luxury goods, household goods and chemicals.

What we do is special. We file requests for seizures and confiscations with China Customs, the Public Security Bureau and the Administration for Industry and Commerce almost daily, netting large quantities of fakes and helping authorities bring criminal cases against counterfeiters. We regularly file trademark infringement lawsuits before the People’s Courts, whether on a stand-alone basis or as ancillary to administrative raids and seizures. We interact daily with both Chinese government enforcement agencies and international ones (such as INTERPOL, for which we serve as official consultants for China). Beyond these activities, our investigations and market intelligence practice specializes in monitoring online infringements and in bringing online trademark enforcement actions.

US

Our US-based team regularly works with our clients to stop counterfeiting by (1) assisting with market surveillance to ensure timely notice of potential counterfeiting issues, (2) working with US Customs and Border Protection to seize, confiscate and prevent the importation of counterfeit goods and (3) when necessary, engaging in litigation before state and federal court or administrative bodies. Moreover, our US-based lawyers seamlessly connect with our colleagues in China and Europe to ensure that our clients can execute a unified, global approach to not only stop the sale and importation of goods, but also work with foreign governments and international agencies to locate and stop the counterfeiting operations at their source. In this regard, we have been able to track shipments of counterfeit goods to their sources in China and obtain permanent injunctions against counterfeiters and “knock-off” makers in the US. Put simply, whether you need assistance stopping a shipment at the port or you need to obtain an emergency temporary restraining order, our lawyers are prepared to enforce your IP rights throughout the country with a truly global strategic perspective.

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  • In cooperation with EUROPOL and national investigation authorities – Coordinating criminal investigations in seven European countries against a scheme of organized crime involving more than 3 million counterfeits with a market value of €60 million.
  • Multinational manufacturer of kitchen appliances – Representing in Europe-wide customs procedures resulting in seizures of more than 100,000 counterfeits during a period of 18 months.
  • Well-known international brand of electric scooters – Advising in Europe-wide customs seizures based on trademark, design and patent rights.
  • Well-known manufacturer of lighters – Representing in customs procedures in more than 40 countries.
  • Group of famous Swiss manufacturers of luxury watches and jewelry – Representing in IP enforcement litigation and criminal prosecution in Germany.
  • Global fashion label – Acting as lead counsel in enforcing its haute couture trade dress in a Lanham Act action in the Central District of California, obtaining a consent judgment and permanent injunction against the copycat infringer.
  • Major automotive client – Orchestrating the seizure of 4,000 counterfeit tire rims with a market value in excess of US$1 million, while pursuing parallel civil and criminal actions against a counterfeiting operation based in the small Chinese town of Huangshi. The infringer, an influential force in the town, brought pressure on local authorities to be released without punishment in exchange for destruction of the counterfeit goods, but it was decided that criminal charges and compensation damages would be sought. Despite numerous challenges in court – including the need to prove the well-known status of the trademark and the illegal profit made from sale of the goods – the infringer agreed to settle and pay the full damages demanded.
  • Furla SpA – Organizing and orchestrating the raid of an underground factory and the seizure of more than US$3 million in counterfeit bags. Relying on both its strong evidence-gathering capabilities and its good relations with local law enforcement, the team’s efforts led to the arrest of five individuals, with lengthy jail terms.