Counterfeiting & Trademark Infringement: Where Lies the Difference?
Are trademark infringement and counterfeiting the same? This is one of the most pertinent questions that give enough food for thought for brand owners as well as trademark agents in Dubai. An ordinary consumer views counterfeit goods as simply a lookalike of a well-known brand; however, from a legal perspective, the issue is far broader, and the line that differentiates both is too thin. Let us explore this matter with a focus on the UAE trademark laws:
Counterfeit Goods Vs Trademark Infringement
In general, we could say that trademark infringement and counterfeit represent the same genus but different species. All counterfeiting marks infringe the registered trademarks, but all trademark infringements are not acts of counterfeiting. A trademark is hit by counterfeiters when an unauthorised copy of the valuable product is made and sold for profits. Counterfeiting applies to marks that appear to be identical to another registered trademark.
In comparison with counterfeiting, trademark infringement is broader in scope. Trademarks are infringed by other marks that are likely to confuse the customers and not by exact lookalike marks. Infringement carries the greater aspect of the likelihood of confusion also while the counterfeiting is limited to a replica of a registered trademark.
Identifying a Trademark Infringement Case
In the UAE, a trademark infringement can be,
- Counterfeiting of a legitimately registered trademark
- Illegitimate use of a registered trademark that is already owned by another party
- Putting a registered trademark of other businesses on a product in bad faith
- Selling products that bear copied or counterfeited trademarks
Chanel is an international brand that makes designer luxury bags for women. The company has registered the word C as a trademark in many jurisdictions, including in the UAE. Imagine a UAE based t-shirt manufacturer uses C in its t-shirt products and lists it for sale on e-commerce platforms such as Noon.com. Here the T-shirt maker is infringing the registered mark of Chanel, even though it is not selling counterfeit products. The infringement causes confusion among the consumers, and Chanel can sue the T-shirt company for trademark infringement in the UAE.
Identifying Acts of Counterfeiting
Counterfeiters reproduce an exact copy of a registered trademark to deceive buyers into buying the product. They make the consumers into believing that they are purchasing a genuine product from the original manufacturer. A handbag that looks like a Louis Vuitton bag becomes a counterfeit when the print, label, logo and design are an almost exact replication of the original bag. The consumer can detect if whether or not a product is a counterfeit when it is sold in unlikely places such as the street. But it’s hard for them if the fake good is sold on retail stores or e-commerce sites. It would be more difficult if the price is almost similar to the original product.
Action Against Trademark Infringements
Once a trademark owner detects that his registered mark has been infringed, a cease and desist letter can be sent to the infringer to stop the use of the mark in question. As a further action, the trademark owner can file a case against the infringer at a court in the UAE. The brand owners can seek the legal assistance of trademark agents in Dubai to claim trademark infringement.
Action Against Counterfeit Goods
There are mainly two efficient methods to tackle the issue of counterfeiting in the UAE. In the first method, the brand owners can record their registered trademarks at the customs office of the respective emirate in the UAE. If infringement is detected, the customs officials will raid the place where counterfeit goods are stroked and will destroy the seized items.
In the second method, the brand owners can opt for administrative action against counterfeiting. I this method, the trademark owners can file a complaint with the Department of Economic Development (DED) of the respective emirates. The DED officials seize and take relevant action on the counterfeiters after conducting an official raid. This method is considered the most cost-efficient action against counterfeit goods in the UAE.
How Can Trademark Agents in Dubai Help?
Counterfeiting is a particular form of trademark infringement that is harmful to the consumers and the economy in a bigger way. Even though many people use both concepts interchangeably, most of them are ignorant about the core differences. Legally moving against trademark infringement and counterfeiting is an absolute necessity for brand owners to retain their brand value and profitability. To secure the registered marks against counterfeiting and infringement, the brand owners require the assistance of the best trademark agents in Dubai, such as Jitendra Intellectual Property(JIP).
JIP’s efficient trademark agents are well-versed in local laws and regulations and can assist the companies in protecting their intellectual property rights across the GCC. JIP’s trademark agents will guide the rights holders in recording the trademarks with customs authorities or Economic Departments and offer expert advice on which method to follow in tackling counterfeit goods as well as other forms of infringement.