The “Ten Commandments” for Developing and Implementing an Effective Brand Protection & Anti-Counterfeiting Strategy

Contents
• Introduction…………………………………………………………………………………………………………………....3
• Thou Shall Not Overly Complicate…………………………………………………………………………………....4
• Thou Shall Not Negotiate ……………………………………………………………………………………………......5
• Thou Shall Not Compete…………………………………………………………………………………………………....6
• Thou Shall Not Rest on One’s Laurels……………………………………………………………………………......7
• Thou Shall Not Think That One Size Fits All……………………………………………………………………..8
• Thou Shall Not Ask For Too Much…………………………………………………………………………………….9
• Thou Shall Not Be Inconsistent……………………………………………………………………………………….10
• Thou Shall Not Interfere…………………………………………………………………………………………………11
• Thou Shall Not Think That You Can Stop All Online Sales………………………………………………12
• Thou Shall Not Go It Alone……………………………………………………………………………………………...13
• Background……………………………………………………………………………………………………………………...14
• About Legal IQ…………………………………………………………………………………………………………………..15

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3
Introduction
Thou Shall Protect Your Customers &
Thou Shall Protect Your Brand
For centuries counterfeits have presented a serious challenge for the
consumer brands. Counterfeiting is not just about losing money on illicit
sales, but the public safety and health is also put at risk, because the
counterfeiter is not really bothered about safety features.
One of the main reasons for any organisation to have in place an anti-
counterfeiting programme is to ensure the safety of your customers and
consumers.
In addition, counterfeit goods reduce consumer confidence and if the
trust of your brand were to get tarnished, then the overall value of the
brand would be lowered, resulting in lost revenue.
Brand protection is essential for every organisation globally and you need
to do all you can in order to protect your customers safety and revenue.
With new risks emerging daily from counterfeiters, online threats, grey
markets, cybersquatters and supply chain violations, industries grapple
with how to deal best protect your organisations from not only a
damaged brand but lost revenue.
Based on an Legal IQ interview with Lars Henriksson, Corporate Counsel,
Global Intellectual Property from Husqvarna, ahead of the 8th Annual
Brand Protection & Anti-Counterfeiting Conference, taking place the 29th
– 31st
October 2013 in Munich the following e-book is a set of
“commandments” to abide by to develop and implement a successful
brand protection and anti-counterfeiting strategy.

4
Thou Shall Not Overly
Complicate
Thou Shall Not Complicate: When it comes to brand
protection, there are so many various techniques, for instance with
holograms, infra-red markings or RFD transmitters. I think one of the key
lessons that I've learned during my years here at Husqvarna is don't
overly complicate that type of protection, especially if the customs official
would need a lot of gadgets in order to detect or distinguish something
from being counterfeit from being real. Make sure you think about what
is practical and simple.
A lot of the techniques out there could be very suitable for other
products, but what concerns us is always that we would complicate things
for the ones in law enforcement that are trying to detect and find
counterfeit. And also give them and even ourselves a false feeling of
security.
You can imagine if you were to combine all the various technique and
technologies that are out there, a customs official would have to have a
tool belt weighing 15 kilos+, with various devices and gadgets that he
would need in order to detect counterfeits.
And not only that, the customs official also needs to bear in mind which
brand is using what protection. In line of that is also, to think what kind of
information I communicate to customs officials. And I would say that you
should never have more than between three to five key features that
they should be on the lookout for, because if you go into an overly
complicated way of distinguishing and detecting, then they will also have
problems in bearing all this in mind.

5
Thou Shall Not Negotiate
Thou Shall Not Negotiate: Don't make deals with
counterfeiters. This is especially important if you have already submitted
evidence or filed charges at any kind to the law enforcement community
(police or prosecutors or customs) - and then enter into a deal with the
counterfeiter by saying that if you manage to throw all these products
out, and if you pay me this amount of money then I'll let you go.
Now, if you do that, you will never ever get assistance, at least not ever
from that particular law enforcement body. Again, because something
they would be extremely annoyed with is that you would give them
evidence of a crime and ask them to take action, and then, when they
turn around and look for aid from you as rights holder, as expert witness
or providing them with a statement, and there is no longer any case, they
will be very, annoyed. So you need to be a reliable victim, in fact.

6
Thou Shall Not Compete Thou Shall Not Compete: In the case of counterfeiting and
brand protection sometimes your market competitor can be your
greatest ally, as you both have a common aim of protecting your brand
and combatting the counterfeiter.
It is not common to have agreements in place, but there are a few
competitors we have done raids together with, in which we provided our
investigating team and they provided theirs. Since you are also talking
about intellectual property, you will also have to show authorities powers
of attorney and often the case is that it goes much faster if each party will
use their own people that they're comfortable working with, and then
join forces.
It will always a bit complicated with cooperation and how close you are
allowed to work due to competition law issues. But if there would be a
raid and we find that there is another brand there instead or as well as
ours, we will of course inform those rights holders, and give them the
opportunity to also enter in with their own rights.
It's almost better that the crime is committed is considered as severe as
possible, because that would mean that the counterfeiter that is grabbed
during that raid will face harsher legal repercussions, than they would just
from our side.

7
Thou Shall Not Rest on
One’s Laurels
Thou Shall Not Rest on One’s Laurels: Brand
protection is always a moving target. You have got to keep your ear to the
rails, as it were, because counterfeiters will change.
One should always try to keep one step ahead rather than one step
behind, even if it is extremely difficult to do that. For instance, when it
comes to taking preventive measures, you should always try to think a
few more steps ahead, what will the counterfeiters be detecting and how
do we change it again when they have detected this particular technique.
You can't just say okay, we'll put in a brand protection gadget or we put
hidden marking on our boxes and then we can just sit back and
everything will be hunky dory. That's not the case. You will always have to
try to keep track of the trends and how they are changing.
One thing that I find with a lot of counterfeiters is that they are pretty
lazy. They will do whatever keeps working and they will change as few
things as they have to until they reach that point, where everything that
has that particular feature will be caught. Then they start changing their
approach.
What you have to do is always have the foresight to try to anticipate what
will be the next probable change in counterfeiters behaviour. It's a little
bit like playing chess, in a sense, because you need to try to see a few
moves ahead.

8
Thou Shall Not Think That
One Size Fits All
Thou Shall Not Think That One Size Fits All:
When determining a global strategy you should never think that “one size
fits all”. There are some parts of the world where the customs works
brilliantly, however you can't have the same approach in these countries
as you would in an emerging market, which doesn’t have the resources or
knowledge.
And sometimes not even the knowledge or the tradition of it. For
instance if you look at China their first IP rights legislation came about
approximately 30 years ago. They have not had that much time to get
accustomed to the idea of intellectual property. It's something that's
quite new to them. And what you can and should do is to aid them and
try to also have an understanding for their particular problems in their
particular regions.
Also try to tailor make your efforts in relation to different territories,
because there are some territories that you don't need to do a lot of
effort, and some in which you will have to basically invent the wheel, in a
sense. If that works for you.

9
Thou Shall Not Ask For
Too Much
Thou Shall Not Ask For Too Much: I think that is an
important thing, especially as some countries are new to the concept of
IP-rights. I was talking to a representative from the Chinese Government,
and he was saying that everybody is saying how incredibly complicated it
is to litigate in China, but as a Chinese, I would have just as many
problems if I were to litigate in France, which is absolutely right. It is
always complicated to litigate somewhere else than in your own country.
It's always going to be difficult to do that. Countries in which we
experience problems very often have very modern legislation. What they
don't have is the experience and resources. That is something that one
needs to be very aware of and not to grasp for too much, because they
will most often try to do as well as they can. That is also why it's
important to have good connections and to establish and maintain good
relationships with the national authorities on various levels.
Also it is important to talk to people in the prosecuting field. Identify
which prosecutors in your country are working with IP relations, with IP
crimes, and discuss with them what their international cooperation looks
like and whether one can then get the aid. At least, this will enable you to
establish a network of contacts.
And finally look at what kind of product do you have and what is the most
efficient way of protecting that particular product. For us it is mostly the
chainsaws, brush cutters and the like that would be counterfeited. If you
have much smaller items, such as headphones and stuff like that, then
brand protection technologies might be very good for you to have in
order to identify and establish fake/genuine at the scene once customs
have made a seizure. If you seize shipments of 30,000 items then it's
easier to establish what is genuine and what is not.
In these situations technologies might be good. But for the boxes
themselves are a good protection and measure in relation to the quality
and look. Counterfeit boxes will often have spelling errors, or wrong
looing serial numbers and the like.
Also important is you have to have also very clear thoughts about how
will your products be moved; how are they going to be distributed and
sold and where are they going to be sold. Shipping routes, which
harbours that are used, which carrier etc, are very valid and vital
information for customs.

10
Thou Shall Not Be
Inconsistent
Thou Shall Not Be Inconsistent: For instance, if you
have a packaging box that is glued, all boxes should be glued. You should
never staple it. And if you do staple it, you should staple it in the same
kind of manner and pattern always. Be consistent.
You should try your utmost not to be inconsistent when it comes to the
content in the packaging box. If you have, for instance, a tool kit that you
send with your product, it should be the same tool kit. It should not be
different tool kits for the same product. Differences for different regions
is fine, as long as these differences are consistent. For instance all
products for the US market will be consistent even if the European
version is different. But you have to be able to establish that all the
contents of the box is the same. This will make determination whether a
product is fake or genuine so much easier for everyone involved.
Be consistent in your contacts with the authorities. For instance, when
you present an evidence package for law enforcement, let's say for the
AIC in China, you should be clear about what you need to provide the AIC
from the outset. And you will give them the same kind of information
every time so that they will feel confident and comfortable and trust you
when you approach them submitting a complaint. I think that this is very
important too, in order to build trust and forge a collaborative
relationship with them.

11
Thou Shall Not Interfere Thou Shall Not Interfere: One needs to be very aware of
the fact that, once you have turned something over to local authorities,
then the case is no longer in your hands. That is something that is
important to bear in mind. You can always make suggestions, but be very
careful with meddling into the police business.
If you have turned a case over to the police, you will have to also accept
that the police will handle it. They are the ones that will run the case. You
will aid them as the product expert. You will need to provide them with
the information that they will request. You can give them pointers, you
can give them suggestions, but not in a way that can be regarded as
interfering.

12
Thou Shall Not Think That
You Could Stop All Online
Sales
Thou Shall Not Think That You Could Stop
All Online Sales: The internet is problematic and one of the
largest problems to businesses, as it creates a direct link between the
counterfeiter and the consumer.
Auction sites are very important hunting grounds for counterfeiters. I
think that sometimes you will have to settle with that you close the
auction down and you make it as difficult as possible for the counterfeiter
to reach out to their consumers, to their potential buyers.
At the same time the internet is also a fantastic hunting ground also for
us. So one also has to sometimes consider keeping a particular site open
for a while so that we can gather more intelligence about this particular
seller.
The biggest problem is by far that there is no liability for the providers, at
the moment at least. For example you could be on eBay or equivalent
site, and you have recurring individuals that will be selling counterfeits
over and over and over again. And the auction site don't have any
obligation to make sure that this particular individual doesn't resume his
sales. As service providers, they don't have any monitoring obligation due
to the so called Safe Harbour doctrine.
When it comes to online, don't automatically panic, because a lot of these
sellers are trying to come across as being far much bigger than what they
actually are. But online of course, is a huge challenge. And I think one
thing is to be a nuisance to counterfeiters. You need to be active, monitor
auction sites, closing auctions down, requesting notices and take-downs.
It's very tedious and it's very time-consuming, and it can be very
expensive, but I think that's the only way at present to go when it comes
to counterfeit online at the moment. Try to become as difficult a target as
possible. Then, hopefully, by your other preventive measures, such as
training customs officials, have customs applications in place etc,
counterfeits will be caught in transit, when they are being delivered.

13
Thou Shall Not Go It Alone Thou Shall Not Go It Alone: Make sure to build
and maintain your external and internal network.
When you work and inform about the problem of counterfeit within your
own organisation, you need to raise awareness of the problem and that
there is an issue. You need to do this in the organisation as a whole. What
can everybody contribute in in order to help out? For instance, that can
be design changes if there are new models, how the packaging looks,
which carriers do you use, how does the pallet look like etc. A lot of things
like that could make things more difficult for counterfeiters to follow suit
on.
You also have to rely on the information that your various sales
organisations will give you. They are at the forefront of this battle. They
will see and encounter the direct repercussions and direct consequences
of counterfeit which this illicit competition will cause them.
Very often they will be the first to understand that there are counterfeits
in circulation. Make sure you use the Internet since it is a great tool in
order to understand more about what products are in circulation and
which ones they are, and which markets the counterfeits are targeting.
The thing to also bear in mind is that if you have a broad range of
product, such as Husqvarna have, then there will be different products,
different models being counterfeited in different territories of the world,
because the products will be more or less popular in the various regions.
The ones that are more popular, those are the ones they will counterfeit.
So I think that keeping a very good communication with your sales and
the various sales teams is of very big importance. Ensure your regional
sales managers know who to approach within your company when they
detect or encounter a counterfeit product. Also make sure they know
what you want them to do – buy samples, secure paper trails, save screen
dumps of marketing etc.

14
Background: About Lars HenrikssoN
Lars Henriksson
Corporate Counsel, Global Intellectual Property
Husqvarna
Lars attended law school at Lunds University, Sweden. After graduation
and after serving as a recorder for the administrative court of Malmö, he
worked at an assistant lawyer at a law firm in Malmö, Sweden. Before
starting his current position at Husqvarna AB in 2011, he worked as a
legal counsel for the Swedish Performing Rights Society (STIM) from the
year 2000 enforcing and licensing music rights on the Internet, television
and radio.

15
About Legal IQ
What is Legal IQ?
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providing 42,000 legal professionals with news, information resources,
networking and most significantly, industry events.
Legal IQ is a division of international, B2B conference and e-learning
company IQPC ltd. IQPC has been running successful legal events for over
a decade, but it's only now that we've decided to move our community
and resources on to a centralised portal. Why? To facilitate networking
and user interaction!
What topics do we cover?
Generally, the topics we cover on Legal IQ correspond with our legal
events. These cover the following themes:
• Patent strategy
• eDiscovery and Information Governance
• Corporate Counsel
• IP and Brand Protection
• Contract Risk Management
• Anti-Counterfeiting
The 8th Annual Brand Protection & Anti-Counterfeiting Conference (29 –
31 October 2013, Munich) is interactive, cross industry forum where you
gain the knowledge to implement informed decisions and strategies to
minimise brand abuse globally. www.brandprotectionevent.com
Why sign-up?
To access our more advanced content, you'll need to sign-up. But don't
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16

The “Ten Commandments” for Developing and Implementing an Effective Brand Protection & Anti-Counterfeiting Strategy

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The “Ten Commandments” for Developing and Implementing an Effective Brand Protection & Anti-Counterfeiting Strategy