The attorneys at Keltie join forces with Customs Authorities, Border Forces and Online Enforcement Agencies to tackle infringement and counterfeiting head-on. Counterfeit goods pose a significant threat to the reputation of brands and unsuspecting consumers through a wide range of sectors.
Manufacturers of counterfeit goods continue to have a negative impact on the environment as well as all those involved with their production and retail. Intellectual Property (IP) law enforcement plays a vital role in combating counterfeits and infringing goods. Therefore, it is important that IP right holders take proactive steps to mitigate infringing and counterfeit goods entering the marketplace ensuring brand protection and product safety before goods enter the markets.
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An AFA is an invaluable weapon for IP rights holders to fight against counterfeits and infringing goods inundating the marketplace in the EU, the UK and abroad. AFAs allow IP rights holders to put the relevant authorities on notice of their IP rights in order to identify, seize and destroy infringing and counterfeit goods. HMRC and the EUIPO allow and encourage IP rights holders to apply for electronic AFAs (eAFAs) in the UK and EU, which equips Border Forces, Customs Authorities and/or Online Enforcement Agencies to identify and detain goods passing through the borders which are suspected of infringing IP rights including trade marks, patents, designs, geographical indications and copyright. It is possible to safeguard against multiple IP rights relating to more than one product provided that they are owned by the same entity.
In the EU, IPEP is the official AFA e-filing tool for all Member States and the alternative for Germany, Italy and Spain which have developed their own online portals. It is possible to obtain a Union AFA (covering all Member States) or national EU AFAs. The main advantage of filing the AFAs electronically is that the information contained is shared in the Customs COPIS database in an organised manner, is searchable and can be made available to the different analysis systems used by authorities. Further, the AFA is generated in all the languages of the Member States where the AFA will be applicable. However, any attached documents to the AFA are not translated. Once an AFA has been granted by the submission country, the AFA is also valid in all selected applicable Member States, in which Customs action is requested by the IP rights holder.
AFAs can be as detailed as the IP rights holders require but there is a requirement for mandatory information in the UK and EU in order to file the AFAs. The mandatory requirements differ in the UK and EU and we would be happy to advise further on this. Authorities encourage IP rights holders to include information on genuine goods as well as known counterfeit/infringing goods in order to assist in the detection of such goods. Our attorneys will work with you to address your IP and commercial needs, advise on the best strategy in order to ensure that the AFA is adequate in order to help protect your assets.
The application process is cost effective and relatively quick in the UK and EU- authorities aim to process AFAs within 30 working days. In the UK, HMRC has been known to grant AFAs within one working day. Once the EU and UK AFAs have been filed and accepted, Border Force will then be able to detect suspicious goods.
If the Authorities detect suspicious goods, they will contact the IP rights holder or their specified representative for confirmation as to whether the suspicious goods are genuine or not and request a response within 3 or 10 working days depending on the shelf-life of the goods. If the goods have a long shelf-life, it is possible to obtain a 10-working day extension to initiate legal proceedings if required. Border Force will also inform the importer/owner of the suspected counterfeit goods that their goods have been detained and will also request a response within 3 or 10 working days to agree or object to the goods being destroyed. If no objection is received or it is agreed, the goods can be destroyed. If the importer/owner of the counterfeit goods objects, the IP rights holder will need to initiate legal proceedings to determine whether there has been an infringement otherwise the goods will be released.
UK and EU AFAs are in place for one year and are renewed annually (at least 30 working days before the expiration of the AFA). The AFAs will need to be maintained throughout the validity of the AFAs, for example, updating information including when the IP rights relied on in the AFAs are renewed or have expired, updating new partner information (i.e. new authorised retailers), updating information if certain partners no longer have a relationship with the business, new known infringers, etc.
At Keltie, we are dedicated to protecting our clients’ IP rights, combating infringement and dilution by preserving the integrity of our clients' brands and reputation. The expansion and evolution of Keltie’s Customs department marks our continued commitment to safeguard the interests of our clients in a developing global marketplace. We recommend that IP rights holders take the necessary steps to ensure that they have the means to fight against copycat and counterfeit goods from the outset. We are passionate in fighting against infringing and counterfeit goods by managing and enforcing valuable assets.
Services you may be interested in
Decades of experience as attorneys, engineers and scientists in industry and research underpin the approach of our patent team. We are resolutely commercial and take time to understand your technology and your business.
Keltie’s patent attorneys are skilled not only in patent searching, but in interpreting the output of a patent search, and in helping you understand what it means for your technology and your business.
Why file a patent application? Patents can serve multiple purposes during their lifetime. They grant the owner a period to enjoy the exclusivity of their invention before others can use it. They give the owner powerful rights recognised in law to prevent infringement. But they are also valuable intellectual property which can enhance the ability of the owner to exploit their technology commercially through licensing or sale of the invention.
A key reason to invest in patent protection is to prevent others from copying your innovation. The patent system is intended to allow you, as a creator, to enjoy exclusivity around your technology for a set period of time. Patents allow you to leverage that exclusivity in order to develop your commercial position.
What is the Patent Box? Patent Box is a tax incentive scheme designed to encourage innovation within the UK. Introduced in 2013, it is a government-backed initiative whereby company profits which are derivable from patented technology are taxed at a lower rate than standard corporation tax. The system is intended to provide a strong and supportive environment for innovation within the UK.
The attorneys in our Trade Mark Group are among the leading brand protection experts in the UK and Europe. Through our associate network, we coordinate brand protection all over the world. The Group comprises multi-lingual European and UK trade mark attorneys with backgrounds in law, engineering and business. Their expertise extends through the full lifecycle, from searching and filing through to opposition and litigation, including enforcement and appeal. The Group also has vast experience in online enforcement.
Before you start using a trade mark, it is good practice to conduct a search to check that the trade mark is free to use. Conducting this type of search can be challenging because there are so many trade marks in use across many different fields of commerce. This makes it difficult for people without trade mark qualifications to navigate other brand-owners’ rights, and avoid or manage potential conflict.
How to file a trade mark The trade mark filing process can be relatively straightforward. In theory, all an applicant needs to do is access the relevant trade mark website, enter the word they wish to create a mark for, add the relevant goods and services to apply to the mark and pay the fee.
What is trade mark protection? Trade mark protection is a means of securing a monopoly right in a word, logo, shape, colour or sound that acts as an identifier of origin, allowing consumers to immediately determine the source of the goods or services offered under that particular trade mark or brand.
Keltie's attorneys have an unusual wealth of expertise and experience in design rights. We help clients protect their designs, exploit their rights and mitigate risks.
If you are launching a new product there is a risk that it will infringe third party design rights. You can reduce the likelihood of costly conflict down the line, or at least be better informed of potential risk, by conducting a design search and clearance assessment before product launch. To do this, we search for relevant earlier rights - both registered and unregistered designs - help you assess the risk these pose to you, and guide you in any action that you might take to reduce and mitigate risk.
To protect your design with a registered right, a formal application must be made to the appropriate IP office. Obtaining a design registration is relatively quick (a matter of weeks or months in the EU and UK), which can be very useful for creators because it means rights and therefore protection can be granted swiftly.
As the owner of a design right, you are able to take action against another party if they market a product that is too visually similar to yours, without your permission. If their product is identical to your design, or if it differs in some ways but the impression the consumer takes from their product matches your design, you may be able to take action.
What is online brand protection? Protecting the value of your brand online is a lot to do with reputation management. In the age of the internet and social media, brands are global, accessible and more easy to engage with than ever before. Online brand protection services from Keltie seek to protect the credibility and equity you have built within your business and include our enforcement, monitoring and detection capabilities.
What is online brand monitoring? Monitoring involves the process of observing and tracking uses of your brand online. It is a key aspect of your business’ operations to both understand your customers’ sentiment towards the brand and uncover any instances where your intellectual property rights have been infringed.
A domain name provides a platform for visibility of a brand in an online space. It is a destination address for the web traffic generated around a brand name. However, simply put, a domain is a word, and a word can be trade marked. Often, people secure a domain name first in their process of creating a new product or service. Whilst an online presence is a key part of launching a new brand, it is a mistake to think that because you own a domain name, you will be able to secure a matching trade mark. The process should work the other way around - where a domain name becomes an additional asset secured following the clearance and registration of a trade mark.
The attorneys at Keltie join forces with Customs Authorities, Border Forces and Online Enforcement Agencies to tackle infringement and counterfeiting head-on. Counterfeit goods pose a significant threat to the reputation of brands and unsuspecting consumers through a wide range of sectors.
People who work in this area
Eleni deals with due diligence, filing and prosecution of trade mark applications around the world. She is also involved in copyright, design and company name matters. She has experience in clearance searching and preparing trade mark filing strategies, in addition to advising on registrability, infringement, passing off and the validity of trade marks. Eleni deals with contentious matters including filing and defending opposition, invalidation and revocation actions. She has experience in brand protection over a range of industries, particularly, luxury goods, gaming, retail, fashion, oil, automotive, food and drink sectors. Eleni is also a regular contributor to the CITMA Review.
Aisling joined Keltie in 2018. Aisling is a member of the Trade Marks Team based in our Dublin Office. Aisling assists both the Irish and UK Trade Mark Attorneys in managing an extensive range of Irish, UK, European and International Trade Mark and Design portfolios. Aisling has wide-ranging experience in both the pre-registration and post-registration stages of the Trade Mark lifecycle, having previously worked in both the Trade Mark Records and Renewals teams.
In her role as a Trade Mark Assistant, Amber works closely with the firm’s experienced trade mark attorneys, providing support and contributing to the management of trade mark portfolios for a diverse range of clients.
Charlotte joined Keltie in 2008, after graduating from the University of Birmingham with a law degree, qualifying as a Chartered Trade Mark Attorney in 2013 and obtaining the IP Litigation Certificate in 2016. After spending 12 years at Keltie, Charlotte spent four years developing and heading up trade mark practices at London law firms. Charlotte re-joined Keltie in 2023 as Partner of the trade mark practice.
Sectors we work in
No matter what your product, aesthetics are invaluable. They are the first impression of a product: the contours, shapes, colours and textures that catch our eye as we see, use and interact with it. Not only does a distinct aesthetic have its own value, but it can enhance function, reinforce brand recognition and loyalty, and drive consumer choice.
Keltie’s specialist AI and Quantum Technologies team is one of the largest in the UK. We are the heavy hitters: Neural Networks, Game Theory, hidden Markov models, Long Short-Term Memory networks, post-quantum cryptography - nothing phases us.
Branding has a key role to play in any industry. Brands are the flags that fly on behalf of a business or product. They are an identifier of origin that allows consumers to recognise where their products or services are coming from, so it is crucial that those brands resonate with consumers. They must also be kept free of problems that inhibit their ability to be the vehicle that drives a business.
Whether it is the development of novel materials and compounds, or the improvement of industrial processes to make them cleaner or more productive, chemical sciences underpin many of the aspects which are key to addressing the challenges of the 21st century. The diversity of innovation in chemistry is vast, with industry-leading companies combining resources and skills to create new products designed to solve problems and enhance our understanding.
Engineering inventions can be found in hugely complex products, or deceptively simple creations. They can encompass almost any field of technology, and often several fields at once.
More so than almost all other scientific fields, our knowledge, understanding and expertise in biology has increased at a phenomenal pace over the past few decades. Since the high throughput sequencing power used in the human genome project was unleashed at the beginning of the 21st century, multiple '-omics' disciplines now characterise a diverse field that offers such enormous potential for medicine, food production, wellbeing and human expression.
Modern technologies and advancements in product design and manufacturing contribute to our being able to lead a more sustainable and improved lifestyle. These in turn are increasing both the expectancy and quality of life we are able to enjoy as consumers by combatting health challenges and diseases, improving diagnostics and developing new therapies.
Materials science and the technologies involved in manufacturing processes underpin almost every element of technological development. The function, quality, longevity and financial value of products are all impacted by their material make up and the mechanisms involved in their production.
Precision medicine, also referred to as personalised or stratified medicine, is an emerging approach for disease treatment and prevention in which medical decisions, treatments and products are tailored to a subgroup of patients by taking into account the individual characteristics of each patient.
There are few greater challenges than starting a company from scratch but the rewards for taking a great idea or innovation and turning it into a successful business are substantial. At their inception, new companies grow quickly, driven by the dedication of owners and their will to make them profitable, but usually with limited financial resources. In order to become established and find a strong position within the market, startups need to attract external investment.
Sustainability or Green Technology is a hugely prominent sector as public consciousness, awareness and engagement with the ‘green agenda’ grows. As consumers, our behaviour can have a significant environmental impact and has prompted substantial strategic and financial support from national governments and the UN as they look to industry to develop sustainable solutions, products and technologies.
The rise of the internet and modern telecommunications has been underpinned by our ability to program computers to carry out complex operations. Almost every aspect of our lives has been advanced by developments in technology and software, making previously slow or complicated processes easier, faster and in some cases, cheaper.
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