How to make your IP enforcement effective – ‘Embed IP into your products’ says Eaton’s Kevin Harris, Chair of BEAMA’s Anti-Counterfeiting Working Group

Companies like yours and mine spend thousands, if not millions, on Intellectual Property. I’m talking about protection of inventions, designs, copyright and, probably most common of all, trademarks, names and logos. But how much of it is enforceable. I’ll give you an example of how it can go wrong.

Kevin Harris

Kevin Harris wants to stop the trade in dangerous counterfeit and non-compliant products

If you make or market a product where there’s no valid patent, your designs aren’t registered and, on the genuine product, the registered trademarks are all on a sticky label, then it’s possible for the counterfeiter to copy your product but not to affix any labels. The counterfeiter makes or sells copies of your products, but does not affix any labels at the time of manufacture, or even, right up to the point of sale.

There’s an example where your IP may not be enforceable, even if you locate the factory where they are made or the warehouse where they are stored. On a raid, on which you may have spent many weeks locating the site, spent thousands employing investigators and a legal team, all you could confiscate, at best, would be the labels, not the products themselves – they wouldn’t have any infringing IP on them to enforce. The raid would effectively fail.

Therefore, you need to ensure that your IP is embedded into the product itself, and there are many ways to do this in order to make copying your products less attractive to the counterfeiter and his customers. The best solution is to mould or stamp your registered trade name or logo into the product itself. Another option is to print, or better still, etch/laser the part numbers and other technical information, along with your registered marks, onto or into the product. With your printing inks, use security style to give a covert level of authenticity.

On some products, and where it is practical, have a track and trace method by giving every product a unique numbering system, combining information such as date code, batch, quality information, even a few random numbers so that it would be almost impossible for a counterfeiter to crack the code. And talking of codes, there are always dot matrix barcodes that can be applied direct onto a product giving millions of combinations on the size of a pinhead.

Many of these measures, if applied direct onto the product would mean that the copies could get confiscated anywhere in the supply chain – from manufacturing site to the retailer, irrespective of whether any labels were applied to the product or not. You’re making the copy less attractive to the counterfeiter – he might go and copy someone else’s products.

That was about the products; now let’s think about the packaging. Please ensure that your packaging is printed with your registered trade names and/or your logos. Whatever you do, don’t use plain packaging, again so that the counterfeiter can ship the plain cartons anywhere, with the copy products hidden inside, and difficult for any customs officer to detect. You can also use security inks and other anti-counterfeit measures on the packaging, if more protection is required.

And finally, the carton label, or any label for that matter when you feel you have no choice but to use one, make sure it has some type of IP protection in it. Special paper, embedded covert water marks, security inks – there are many possible solutions out there to suit your needs.

No anti counterfeit measure is 100%, but the more IP you can embed into or onto the products themselves and to the packaging, the better chance you’ve got of enforcing your IP and making the costs of IP protection effective. Your IP has a great value to your company, possibly more than you’ve previously considered. Ensure it’s enforceable through the whole supply chain of the counterfeits by embedding your IP into the products and packaging – don’t rely on labels alone.

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