Is selling copy/fake/counterfeit/replica goods legal?

Sandtree

prowla said:

robatwork said:

Your question is too vague.

Selling replica goods isn't inherently illegal

Selling counterfeit is.

Thanks - is there a legal definition of counterfeit goods in the UK?

pbartlett said:

It's quite simple really - Aldi can't sell a cake called Colin that looks identical to the M&S version.

What they can do is sell a cake called Cuthbert that looks somewhat like Colin but is not identical.

M&S feel that it looks a bit too much like Colin so Aldi will probably have to change it slightly.

That's the difference between a counterfeit (illegal) and knock-off (legal).

Thanks - do you know what specific law says that (eg.) "Aldi can't sell a cake called Colin that looks identical to the M&S version.", if: (a) they have a note next to it saying it is a copy and not genuine, and (b) M&S haven't yet noticed and objected?

Trade Marks Act and Copyright Designs and Patents Act are your light reading.

M&S has noticed and have objected and issued proceedings https://www.bbc.co.uk/news/business-56756731 

I wouldn't get too hung up on fake -v- counterfeit -v- replica -v- knock off etc the differences are nuanced and people often use them interchangeably. Personally I'd agree that "replica" doesn't automatically mean there is deceit and so a replica channel handbag is illegal but a replica sword is likely to be fine if advertised as such.

prowla

Thanks for the comments so far - I was hoping for someone to jump in with "yes, and this is the law", but perhaps my question was indeed too open.

The specific question here relates to guitars and I have had an argument with someone about it, so I was looking for some insights without influencing things by pre-stating my position.

One of the top brands of guitar is Fender and the market is awash with copies which have had their brand logo sanded off and fake waterslide transfer ones applied. Some of them are as as good (or even better) quality as the originals and and even indistinguishable, and can be priced around £1000.

Whilst doing this is clearly trademark infringement, Fender themselves don't have the wherewithall to go after each and every individual who is selling one on ebay/gumtree/facebook/etc. and the per-case wins would not be worth the effort anyway.

There is also a supposition by some of the sellers that if they say it's had a "cheeky" logo applied, it's all OK, because they've given full disclosure and so they are not being fraudulent because that eliminates any intent to deceive the buyer.

The WTO has trade rules which forbid the import of counterfeits into a member country, under "TRIPS Agreement – Article 51", which states:

"counterfeit trademark goods" shall mean any goods, including packaging,
bearing without authorization a trademark which is identical to the
trademark validly registered in respect of such goods, or which cannot be
distinguished in its essential aspects from such a trademark, and which
thereby infringes the rights of the owner of the trademark in question
under the law of the country of importation;

So, that defines a "counterfeit" as an item which bears an unauthorised likeness of a company's logo. However, that specifically relates to the importation, not in-country items.

In contrast, UK law appears to be focused on:

• Protecting consumers from buying fake goods which are presented as the genuine article, via Trading Standards.
  
• Allowing companies to pursue misuse of their trademarks, under the UK Trade Marks Act 1994 (but nobody cares and it's not illegal if they don't take action).
  
• Covering forged/counterfeit money, in the Forgery Act 1981.
  

Now, the Forgery Act states (it seems to use forgery & counterfeit interchangeably):

A person is guilty of forgery if he makes a false instrument, with the intention that he or another shall use it to induce somebody to accept it as genuine, and by reason of so accepting it to do or not to do some act to his own or any other person’s prejudice.”

But that specifically limits it to instances pretending it is genuine, and thereby is negated by the seller openly and "honestly" saying it is a fake.

So, I've looked, but I can't find is a law which states that:

• it is illegal full-stop to offer for sale a guitar in the UK which bears an unauthorised Fender logo, and
  
• such an item is a counterfeit.
  

(ie. with no mitigations, small-print, get-outs)

It'd be great to have a link to the actual law (or case law) which covers this, if such a thing exists.

Zinger549

If they're passing them off as a genuine Fender then that would be wrong. It's like when trading standards officers go to market stalls or to those shops on Bury New Road (fake ally).  They find clothes, shoes and bags with with well known brand logos (Nike, Gucci, Balmain ect). They are fakes.

If you put an ad on Ebay/Gumtree for a Fender Stratocaster but it's not made by Fender then you could be done for selling counterfeit goods. I seem to remember someone getting in trouble for selling Tiffany style lamps. They never said they were genuine Tiffany but mentioned the brand name.

Manxman_in_exile

As above ^^^^^^.

If somebody (whether the manufacturer or someone else) is taking XXXX brand guitars and then altering or disguising them to look like Fender guitars and then selling them, then that person is committing a criminal offence known as "passing off".  That offence would normally be prosecuted by Trading Standards...  (    don't get me started on the difficulties of getting TS to do anything - I had the misfortune to be a trainee TS officer in the 1980s and they were USELESS!!!   ).

If you'd asked me in 1982 or 1983 what the relevant legislation or case law was, I could have told you straight away - but 40 years on I have no idea.  Just accept it's a criminal offence.  (Somebody referenced some legislation above - it may or may not be correct). 

I'd also just accept what Sandtree says that it's pretty pointless arguing the toss about the meanings of fake, counterfeit, replica etc.  If something is an infringing copy it's an infringing copy whatever you call it.  Somebody above attempts to distinguish between counterfeits and "knock-offs".  That's rubbish.  I can guarantee that no statute or court judgement distinguishes between counterfeit and "knock-offs".

theoretica

prowla said:

• Allowing companies to pursue misuse of their trademarks, under the UK Trade Marks Act 1994 (but nobody cares and it's not illegal if they don't take action).
  

Are you sure about that?  My understanding is that it is illegal and trading standards could take their own action.  Just as the fact that there aren't cameras enforcing the speed limit on the road near me and loads of drivers speed without consequences doesn't change what the speed limit actually is.

Manxman_in_exile

prowla said:

robatwork said:

Your question is too vague.

Selling replica goods isn't inherently illegal

Selling counterfeit is.

Thanks - is there a legal definition of counterfeit goods in the UK?

pbartlett said:

It's quite simple really - Aldi can't sell a cake called Colin that looks identical to the M&S version.

What they can do is sell a cake called Cuthbert that looks somewhat like Colin but is not identical.

M&S feel that it looks a bit too much like Colin so Aldi will probably have to change it slightly.

That's the difference between a counterfeit (illegal) and knock-off (legal).

Thanks - do you know what specific law says that (eg.) "Aldi can't sell a cake called Colin that looks identical to the M&S version.", if: (a) they have a note next to it saying it is a copy and not genuine, and (b) M&S haven't yet noticed and objected?

The point is that if it is - as you say - "a copy", then it is by definition a copyright infringement because it's been copied from somebody else's work.  Do you understand?  In theory the person (eg M&S) who produced the original has a civil remedy to sue the person making the copy plus the person making the copy is also committing a criminal offence.  (As I posted above, I can't point you to the current legislation because I don't know what it is - but it won't be significantly different from 40 years ago in this respect).

Of, course if it hasn't actually been copied (or altered in some way so as to pass it off as somebody else's work) then it may not be an offence.

(The above ignores questions about registered trademark and patent infringements which are too difficult for a Sunday.)

born_again

prowla said:

The specific question here relates to guitars and I have had an argument with someone about it, so I was looking for some insights without influencing things by pre-stating my position.

One of the top brands of guitar is Fender and the market is awash with copies which have had their brand logo sanded off and fake waterslide transfer ones applied. Some of them are as as good (or even better) quality as the originals and and even indistinguishable, and can be priced around £1000.

Whilst doing this is clearly trademark infringement, Fender themselves don't have the wherewithall to go after each and every individual who is selling one on ebay/gumtree/facebook/etc. and the per-case wins would not be worth the effort anyway.

Well that would be creating a counterfeit.

As while the original may have been sold as a replica. The fact someone is taking their name off and then adding Fender in its place.

Fender if they think anything of their brand should be reporting to ebay etc and getting it dealt with. They do not have to chase each seller, simply tell ebay of the issue & they will take action against them if they fail to stop the problem.

Just one of many cases to be found on google.

https://tamebay.com/2020/01/canon-wins-lawsuit-against-ebay-users-selling-counterfeits.html

Louis Vuitton won & ebay were ordered to pay $61 Million to them.

Manxman_in_exile

theoretica said:

prowla said:

• Allowing companies to pursue misuse of their trademarks, under the UK Trade Marks Act 1994 (but nobody cares and it's not illegal if they don't take action).
  

Are you sure about that?  My understanding is that it is illegal and trading standards could take their own action.  Just as the fact that there aren't cameras enforcing the speed limit on the road near me and loads of drivers speed without consequences doesn't change what the speed limit actually is.

I believe you are correct.  The difficulty is in expecting or getting TS to do their job enforcing criminal law.  Any civil remedy that M&S (or Fender) may have is a separate issue.

(Again I'm not commenting on where the current legislation and case law is to be found).

robatwork

Interesting case as there are hundreds of companies making Strats. As long as they don't use the name Fender or Stratocaster the guitar shape itself isn't protected. Unsurprisingly, Fender tried to trademark the shape, but failed. So I think it's more about "passing off" ie. trying to make a consumer believe you're buying a Fender, with Fender parts from a Fender factory.

Keep us informed, Squire.

And if you see a worse attempt at a pun than that today I'd be surprised. 

pbartlett

Just to be crystal clear - if you make a guitar look like a Fender, complete with Fender name etc, then you can put 14 foot neon lights above it saying "THIS IS NOT A REAL FENDER" but you still can't legally sell it.

What you CAN sell is a guitar that somewhat approximates to a Fender with a name called FENBOR