Jack Ellis

A minister from the government of the Indian state of West Bengal has called on trademark owners to be more diligent in reporting suspected counterfeiting to local authorities, arguing that many “do not take it up seriously” when it comes to fighting fakes.

The Indo-Asian News Service (IANS) reported that Sadhan Pande, West Bengal’s minister of consumer affairs, made the comments at an event held in Kolkata last week and organised by the Federation of Indian Chambers of Commerce & Industry’s Committee Against Smuggling and Counterfeiting Activities Destroying the Economy (FICCI-CASCADE). Pande told those in attendance that counterfeiting in India “is dangerous and it has become a menace,” and suggested that “a mechanism has to be found to stop trade of counterfeit products”.

However, Pande indicated that he felt some brand owners were not putting enough effort into combatting illicit trade, specifically by failing to inform the relevant authorities. “It is a concern that such companies are not taking appropriate steps to stop counterfeiting,” he said. “They do not bother to contact us and do not take it up seriously”. Based on the IANS report, Pande seemed to be suggesting that the authorities had apparently not received any complaints from certain brand owners, despite fake versions of their products being widely available and easily obtainable in the local market.

The minister’s comments will no doubt be galling for many trademark counsel who spend the majority of their time and limited budgets on the never-ending fight against counterfeits. Moreover, India’s IP protection infrastructure doesn’t exactly possess a stellar reputation, suggesting that enforcement and policing in the country are particularly difficult – perhaps explaining why many brand owners, and especially smaller companies, might “not bother” involving the relevant authorities if trademark infringements are detected. Nevertheless, looked at from another vantage point, Pande’s reported comments may be at least partly justified.

Also speaking at the FICCI-CASCADE event last week, Gaurav Vutts, regional legal manager at Hindustan Unilever. He noted that his company’s counterfeit trade problems were compounded by the significant volume of fakes coming in from manufacturers outside of the country, which he argued are far more difficult to trace and report. “To curb the menace and protect the brand, domestically we are taking actions against retailers and distributors,” he said, perhaps in response to Pande. “But we are unable to take on the manufacturers of counterfeited products, because the majority of them are not within India.”

This point was echoed by Siddharth Wanchoo, executive vice president at tobacco company ITC. “The challenge we are facing is that cigarettes manufactured outside the country are being smuggled into India,” he said. “These stocks are largely coming from Dubai, Myanmar and Southeast Asian countries.”

Speaking at an INTA leadership meeting in Panama back in November 2015, Newton Vieira Jr, Latin America brand protection director at Nike, implored trademark owners to pour more effort into preventing illicit goods in transit from one country to another from reaching their next destination. Saying that he had “a request for brands that still don’t get it”, Vieira Jr highlighted action taken during transit as key to stopping the worldwide flow of counterfeits. “What we need to do is support each other in this work,” he said. “How? First, by sharing intelligence and investigations information. But also by being present. We have learnt through the years that counterfeiters locate safe ports.” Citing a regional example, Vieira explained that a common counterfeit trade route is to ship goods from China, through the Panama Canal and onward to Jamaica. “From Jamaica they send them on to Belize,” he continued. “But where are these goods sold? Mexico. So we need to be present and stop them before they arrive in Belize. It is easy to drive a truck from Belize to Mexico and it then becomes a nightmare for law enforcement in that market… [So action along the route is important and] we have to give Customs all the help that they need.”

Taking Vieira’s words into consideration along with Indian brand owners’ complaints about the inflow of foreign counterfeits, then we can see that Pande’s request for rights holders to do more to assist the authorities is perhaps not an entirely unreasonable one. Nonetheless, many trademark counsel will already feel overstretched when it comes to international policing; and to work more closely with customs, law enforcement and other local agencies, they will need to see concrete results in order to feel that such efforts are worthy of further investment. 

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