Assertive anticounterfeiting in Africa and Asia
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

Assertive anticounterfeiting in Africa and Asia

Your products are sold in emerging markets in ASEAN and Africa regions but you are dealing with a major counterfeiting issue. Considering that each country is unique in terms of legal system and culture, how should you tackle this problem?

Monday’s session entitled “Anticounterfeiting Strategies in South East Asia and Africa” explored this. The session was moderated by Lara Kayode of O. Kayode & Co.

Kingsley Ejiofor of NAFDAC (Nigeria) said international and regional collaboration is crucial in the fight against counterfeits in Africa, and that his agency has benefitted from this approach. “When they escape from one place we can catch them where they go,” says Ejiofor. He said conflict between various public authorities in a country can hinder efforts, and that engagement with local communities helps. “We’ve come to realize that awareness is key in this fight,” he said. Ejiofor also informed registrants about next month’s public hearing in the Nigerian Senate on the issue of counterfeiting.

Nick Redfearn of Rouse said the IP regimes and justice systems in ASEAN countries vary. For example, Thailand and Malaysia have specialized IP courts whereas Vietnam and Cambodia do not. Redfearn said strategically important ASEAN countries need to take the lead on IP enforcement in the region, picking out Singapore as a leading light. He noted the Internet has worsened counterfeiting in the region. “This is because of the boom in e-commerce. Governments are not yet able to understand where e-commerce is going,” he said. For brand owners facing major counterfeiting problems in the region, Redfearn advised: “Self-help is the only way for now.” He said the branded goods industries need to collaborate, just like the copyright-based industries, to deal with this problem.

Redfearn said the best way to approach the issue is through customs, but unfortunately most Southeast Asian countries do not yet have strong IP protection at customs. He believes Thailand’s authorities operate well in this area, but it remains to be seen when others will get to that level. China, he said, has made progress due to health concerns. Corruption and smuggling can also affect anticounterfeiting efforts but this is not something the IP community can do anything about. “This is a failure of the legal system,” he noted. He said the narrative should be that counterfeiting is part of general illegal activities.

“Don’t put all your efforts into the administrative system. You need the criminal system to work too,” he warned. His action points were: (1) act immediately, do not wait; (2) registration is critical, so do not come late to market, as trademark squatting is rife; (3) participate in organizations and be in the position to know what is happening on the ground in each country; and (4) be assertive, and do not take no for an answer.

William Mansfield of ABRO Industries Inc. urged Western brand owners not to give up on certain markets even though it is tough. “If you work in the right way you can be a success story,” he said. He highlighted that the approach in developed countries is unlikely to work in developing countries. “In most of these countries lawsuits don’t work. Let go of the lawsuit mentality,” he warned. “These are different countries with different problems,” he said, adding: “You have to adapt to the environment. Be prepared to think how they think.” Lastly, he urged brand owners to venture out into these countries and present their cases to the government. 

more from across site and ros bottom lb

More from across our site

A 36-member team from Zhong Lun Law Firm, including six partners, will join the newly formed East IP Group
The Delhi High Court sided with Ericsson against Indian smartphone maker Lava, bringing the companies' nine-year dispute to a close
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
Tennessee has passed the ELVIS Act, a law that fights against AI models that mimic the voice and likeness of music artists
Rob Stien, chief communications and public policy officer at InterDigital, says the EU has forgotten innovators while trying to solve an issue that doesn’t exist
As Australia’s Qantm IP leans towards being acquired by a private equity company, sources discuss what it could mean for IP firms
Law firms that are conscious of their role in society are more likely to win work, according to a survey of over 23,000 in-house professionals
Nghiem Xuan Bac Pham, managing partner of Vision & Associates, discusses opportunities created by the US-China rift as well as profitability issues facing IP practices
Douglas Leite and two of his colleagues were intrigued by Bhering Advogados’s mission to grow its patent litigation practice
Each week Managing IP speaks to a different IP practitioner about their life and career
Gift this article