Louis Who - A Global Perspective On Counterfeiting And Infringement

What is the difference between trademark-infringing and counterfeit goods? Most clients perceive counterfeit goods as being simply "fake" because they look identical to an established product but, from a legal perspective, things are not that simple. Let us explore different views on this matter from around the world.

Across our global offices, a question that we often receive from IP counsel is whether or not goods merely "infringe an IP right" or if they qualify in addition as "counterfeit goods". To the ordinary consumer, counterfeit goods are simply perceived to be "fake" goods because they look similar or identical to an established branded product but are not the genuine products of the brand owner. From a legal perspective, however, the issue is not always clear.

In some jurisdictions there is no distinction between "infringing goods" and "counterfeit goods", while other jurisdictions have specific legal distinctions. Therefore, as the title of this article suggests, a hypothetical "fake" handbag called Louis Who, which is made in China, may qualify as "infringing goods" in one jurisdiction and "counterfeit goods" in another, or often in both categories as the latter category has a narrower definition.

Global and multi-jurisdictional IP issues such as the one highlighted by our hypothetical Louis Who handbag would normally require in-house IP counsel to consult several different IP firms in different regions. Dennemeyer, however, with offices on all relevant continents and wide-reaching networks can efficiently handle multi-jurisdictional branding issues as a single group. Let us explore together the status of our Louis Who handbag from the perspective of our different offices.

Europe

In Europe, Olivier Lombardo advises that there is no classification on an EU level that distinguishes infringing goods from counterfeit goods. All infringing goods have the same illegal status. The EU IP rights enforcement directive sets minimum requirements applicable to each single member state to take border measures concerning goods that infringe trademarks, enforcement laws and procedures. Even though the position looks very simple at first sight, the definitions in the national laws of each EU member state may slightly differ and the support of a local expert is essential.

Lombardo and his team are able to advise on the best strategies in the Benelux countries, while Roland Weede, Malte Köllner and their teams cover Germany from both Munich and...