Q. What must I do to protect my brand to deal with the threat of counterfeiting?
A. There are three essential first steps.
First, register your trademarks in all countries where you do business or plan to do business if you have not done so already. This is essential to protecting your brand rights in every country. Consult with a trademark attorney to determine the most effective and efficient way to do this, including registration abroad. Visit the US Patent & Trademark Office website for further information. (See Assistance to Members).
Second, in the United States, record your registered trademarks with U.S. Customs and Border Protection. This allows US Customs to protect your brand at the port of entry. (See Assistance to Members).
Third, develop within your company a brand protection or anti-counterfeiting program combining executive, legal, technical and sales resources to combat counterfeit products. Train key personnel about how to recognize if your brand is being wrongfully exploited and what to do about it. (See Assistance to Members).
Q. I have heard that there is a backlog of pending trademark registrations in China and it may take up to twelve years to register my trademark in China. Is it futile to register in China?
A. No. While it is true that there is a substantial backlog of trademark applications in China, the recommendation of the US Patent & Trademark Office is that your company should not be daunted by the backlog and you should not delay filing an application for registration in China one moment. Visit the US Embassy’s website and consult their IPR Toolkit for further information. (See Useful Links).
Q. What if I suspect that a certification mark on an electrical product is not genuine?
A. Contact the certification organization directly or check their websites to determine if the product is listed by UL or CSA or if the certification mark meets their listing requirements. Both Underwriters Laboratories (UL) and CSA International have active anticounterfeiting programs. At UL, contact Brian.H.Monks@us.ul.com. AT CSA, contact firstname.lastname@example.org. (See Useful Links).
Q. What are good tips for electrical contractors and electrical distributors who want to avoid buying or installing counterfeit electrical products?
A. The November 2004 issue of Consumer Reports magazine contained useful tips for consumers that are equally applicable to commercial purchasers of electrical products. These tips include:
- Be cautious of extraordinary bargains. Products may be cheap because they are counterfeit or defective.
- Beware of products sold outside the normal distribution channel.
- Check the warning label. Be cautious where the label conflicts with information elsewhere on the package or is written in ungrammatical English.
- Avoid purchasing no-name products. Knowing the name of the manufacturer allows authorities to track down a legitimate corporation to remedy problems.
- If you have concerns about the authenticity of a certification mark, call the certifier.
Additionally, the distributor or electrical contractor might notice differences in packaging, product coloration, weight, and other product characteristics that they are not familiar with, and they should contact the manufacturer to determine if the differences represent product design changes. Distributors and contractors should be alert to old dates on packaging that might signal that a previous version of the packaging no longer used by the genuine manufacturer was copied by the counterfeiter. Other business strategies include doing business with a trading partner that has been around for awhile, calling manufacturers directly about suspect parts or independently testing products, and purchasing from distributors who carefully screen, certify suppliers and guarantee a refund if the part turns out to be counterfeit. Trading in counterfeit products presents additional business risks for distributors, retailers, and electrical contractors. For further information, read the article in May 2005 IAEI News, and the Spring 2006 edition of Regulator's Update published by CSA.
Manufacturers and distributors should have procedures in place ensure the legitimacy and authenticity of the goods they sell, and that the goods may be legally sold. Review the Coalition Against Counterfeiting and Piracy's Supply Chain Toolkit, which offers practical advice to manufacturers, distributors and retailers about best practices to reduce the opportunity for illicit product to enter the supply chain.
Q. What are some examples of electrical products that have been targeted by counterfeiters?
A. The following are some examples: small electric motors, welding electrodes, control relays, circuit breakers, fuses, receptacles, switches and lighting controls, ground fault circuit interrupters, dry cell batteries, lamps, lamp ballasts, extension cords, power strips, communications wire and cable, electrical connectors, and conduit fittings.
Q. Do counterfeit electrical products present any health and safety problems?
Q. What is a counterfeit product?
A. The legal definition under trademark law describes a product bearing a mark that is "identical with or substantially indistinguishable from" a genuine trademark registered on the principal register of the U.S. Patent & Trademark Office.
Q. What is the difference between a counterfeit trademark and an infringing trademark?
A. All counterfeit marks are infringing. Infringing marks also include a broader class of marks that are "confusingly similar" to genuine marks. While counterfeit marks include marks that are "substantially indistinguishable" from a genuine mark, this definition comtemplates only minor or trivial differences from the genuine mark. The "confusingly similar" test for infringing marks contemplates wider differences.
Q. What is the practical difference between counterfeit and infringing marks?
A. There are differences in legal remedies available. A trademark owner can seek an ex parte seizure order from a court in the case of counterfeit goods under 15 USC 1116 (d). For a merely infringing mark, a trademark owner can pursue an injunction, which is granted only after notice to the defendant and a hearing. Similarly, U.S. Customs must seize and destroy counterfeit goods, but in the case of merely infringing goods, goods may enter the country if the infringing marks are obliterated.
Q. What can I do if I find a counterfeit version of my product on eBay or some other online auction site?
A. EBay's VeRO program allows patent and trademark owners to report counterfeit and infringing products directly on the eBay website.