Tips and Guidelines

The following tips and guidelines outline the possible plans of actions if your product or process has been counterfeited. If you need more information on anti-counterfeit actions, please check JETRO headquarters website or the website of Japan Patent Office, where there are additional resources such as the Manual of Anti-Counterfeit or Statistics on Counterfeit Activities.

  1. Start with an Investigation
    • Investigate everything possible, such as whether there is any imitation sold elsewhere, how it was launched into the market and if there is any wholesaler who supplied it to the retailer. It will be useful if the manufacturing source can be identified. The company's sales network can compensate the investigation or the investigation may be outsourced to an external surveying company.
    • Supposing a genuine part or packaging is contained in the goods, the investigation should be done to find out how the genuine part or packaging has come to the imitation manufacturer. The imitation manufacturer and a circulation route may be revealed in the investigation. For example, the genuine part or packaging may be sold through illegal channels from consignment places, from which these items might be recovered.
    • If the products contain some specially-designed parts that are visibly fake, then the investigation should search for the manufacturer that is capable of producing them. There are usually only a few, so it is easy to find them.
  2. Consider whether a legal action can be taken
    • Firstly, consult with lawyers who have official qualifications in the country concerned and find out whether legal action based on intellectual property rights can be taken or not.
    • To take legal actions based on industrial property rights, it is better to have appropriate registrations in the country concerned. For example, for trademark rights, the trademark of the product concerned must be registered in the classification applicable to the product in the country concerned. For industrial design rights, the design of the product itself or the package of the product concerned must be registered in the country concerned. For patents, petty patents or utility model rights, the chemical compounds, composite, manufacturing process, or product structure of the product concerned must be registered as patents, petty patents or utility model rights in the country concerned.
    • In general, cases of trademark rights are the easiest legal actions to make, followed by cases of industrial design rights. Patents cases are the most difficult legal actions to make. In countries such as Laos, Cambodia and Myanmar, whose legal system of design rights and patents have not been adequately established yet, legal actions by patents or design rights would not be feasible. (However, the situation in these countries might be changing, so please check updates.)
    • Even when there is no right registered, well-known marks might be protected under international treaties. Moreover, imitating famous indications or imitating configurations of goods might be claimed as criminal actions of "passing off." However, in developing countries such as those in Southeast Asia, using these rights is not as easy as using industrial property rights.
    • To file criminal accusation, you are required to file it to police (or customs officer in the case of import product) for an investigation. You might be required to use a defined application form. It is better to submit sufficient information to officials in order to get quicker investigation and raid. In case criminal investigation is taken, it might lead to seizure of the counterfeits, or arrest of criminals. After the investigation, the suspects might be sent to the public prosecutor's office, and prosecuted (view example of criminal procedure). In Thailand, the injured person can also prosecute suspects directly in court (view example of criminal procedure prosecuted by injured party). In both cases, using legal representation (i.e. lawyer qualified in the country concerned) is practically obligatory. It means you are required to prepare letter of attorney beforehand. Also, it is better to have close cooperation between you and your local representatives. However, we strongly discourage attending investigations since they might be dangerous.
    • In case you choose civil action, you can ask compensation of damage and/or suspension (view example of civil procedure). Moreover, in case the contract with shops has a clause such as "shop may not sell counterfeits" or in case the contract with factories has a clause such as "factory may not sell the goods produced to third parties", you can accuse the shops or the factories in civil action.
  3. Consider whether other actions can be taken in addition to legal actions
    • In case the infringer is also the person you have business transactions with or business relations with, you can warn the person that unless they stop producing or selling counterfeits, you will cancel the business transactions or stop shipping products to the person. It is quite common to warn the infringer before taking legal actions.
    • Consider using mass media as well. For example, in case consumers can easily recognize the difference between genuine goods and counterfeits because of price difference or appearance difference, it is quite effective to advertise such information in newspapers. In addition, making a press release after a raid helps suppress other possible infringers.
    • Taking actions against counterfeits by an individual or one company itself is difficult. Therefore it is recommended to take action in cooperation with other companies doing similar business, through industry organizations, or to address the government through the Japanese chamber of commerce.
    • Unfortunately it is costly to take legal actions, therefore they might not be cost-effective. In case the price difference between genuine goods and counterfeits is not so big, discounting the price of genuine goods or releasing competitive new products to the market might be the best way to expel counterfeits from the market and minimize damage.
  4. Others
    • Always consider who would be most effective as the target of the anti-counterfeit activity. Generally speaking, attacking "upriver" is more effective. Therefore, if you know who manufactures the counterfeit, it would be better to strongly attack them, through a criminal investigation or law suit. In case you do not know such "upriver" organizations, it would be better to firstly take anti-counterfeit actions "downstream" in organizations such as retail shops, and then follow upwards with stronger action.
    • In case there are third parties who are also damaged, look at their reactions carefully. For example, in case some parts are marked with other manufacturers' trademarks, the manufacturers might also be damaged. Working with such third parties to take anti-counterfeit actions would be more effective than doing so on your own.