Intellectual Property Protection and Enforcement Manual - Ipr-policy.eu

Brand Protection Manual
Follow Up on Seizures
When CBP seizes a shipment of infringing merchandise, it does so under federal statutes. Since
counterfeiting is a federal crime, those statutes provide for monetary penalties that the importer must
pay to CBP. If the shipment is large, the penalty can amount to tens of thousands of dollars, not to
mention the loss of the shipment and what was paid for it. Obviously, the importer is going to be
upset about the loss, and you should expect that the importer will try to contact you.
Furthermore, importers of infringing goods are given the right under federal statue to petition for the
release of the merchandise. The Anti-Counterfeiting Act of 1996 states that in the absence of written
consent of the trademark holder, the seized shipment must be forfeited to CBP. If the you are certain
that the goods are counterfeit, do not give consent. As the IP owner, you have the upper hand. After
all this work with CBP in catching a counterfeiter, making a deal with the importer for the release of
the shipment makes no sense. Do not cave in to the temptation of concessions or manipulations of
the product from importers. By standing your ground, you will be telling the counterfeiters that you
will not tolerate the counterfeiting or piracy of your intellectual property, while also telling CBP that
you support its efforts.
Once CBP knows that you are serious and support its efforts with a zero tolerance policy, you are
well on your way toward building a strong foundation, built on trust and integrity. CBP may go
after businesses that are distributing counterfeits of your products that are already in the stream of
commerce. It may target warehouses and conduct raids in the interest of seizing counterfeit goods. It
may also want you there to identify potentially infringing merchandise. It is your obligation to make
yourself available in these circumstances. Remember, CBP is taking the initiative to help you.
Finally, raids can result in the arrest of individuals trafficking and distributing counterfeit and pirated
goods. Ultimately, the U.S. attorney may want to prosecute these people. If that is the case, you may
need to testify in court. Keep records of your work with CBP so if and when the time comes, you are
prepared to accurately talk about your company’s IP and how the seized products were identified as
being counterfeit or pirated.
Private Investigators
Other key players in any successful anti-counterfeiting program are private investigators. Good
private investigators can serve as your eyes and ears on the street, following leads, interacting with
CBP and law enforcement, and sending messages to counterfeiters that you are on the lookout for
counterfeit goods. In addition to tracking down instances of counterfeiting, investigators can help
train law enforcement and CBP officials to identify counterfeits of your products. Some investigators
also provide their own 24-hour hotlines that law enforcement and CBP officials can use whenever
they come across suspect goods. While the nature of the brand owner’s business and the geographic
scope of its product distribution may determine whether a brand owner can rely on a single
investigator or a network of investigators, following are some suggestions for creating a successful
investigator relationship:
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