What is the difference between a fake and an imitation?

A common question for trademark attorneys is what is the difference between a “counterfeit” product and a “knockoff” product?

The term counterfeiting is strictly defined by federal law. The term imitation is used colloquially to describe those products that copy or imitate other products, but which may or may not be illegal under trademark laws.

The key difference is whether or not the product contains a brand name or logo identical to a trademark.

In the United States, the federal Lanham Act is the key statute that defines trademark laws. Sections 32 and 43 of the Lanham Act allow trademark owners to file civil lawsuits. Furthermore, those who knowingly sell counterfeit products are subject to criminal prosecution.

A counterfeiter is someone who intentionally and identically (or nearly identically) copies a federally registered trademark and places the fake name or logo on products that are not authentic. These products are considered illegal because they are clearly intended to mislead consumers at the point of sale and are a fraud to the public. Someone can be a counterfeiter even if they do not manufacture the products, but sell them to others.

“Imitation” is a broader category and may include products that have an overall appearance confusingly similar to a known product, but do not contain identical logos or federally registered trademarks. Those who sell such products can still be sued by the trademark owner because these products can still cause consumer confusion, even if they do not contain counterfeit brand names or logos. However, this type of “imitation” cannot be prosecuted criminally.

Trademark owners can bring civil lawsuits against both types of targets: (a) those who produce and sell counterfeit products; and (b) those who produce and sell knockoffs.

The Lanham Act offers a variety of remedies to trademark owners, depending on the factual circumstances and the products involved. These remedies include the imposition of heavy fines, injunctions, destruction of counterfeit products, as well as litigation costs and, in exceptional cases, making the infringer pay the brand owners ‘attorneys’ fees and investigation expenses. .

If you call a counterfeit product a “replica”, can you still be sued and / or criminally prosecuted? The answer is absolutely yes.

The product itself is still considered a fraud, regardless of the specific way it is marketed and sold. It is intended to confuse consumers, both before and at the point of sale or after. Calling thousands of counterfeit watches sold online as “replicas” does not make them any less harmful to brand owners, whose brands are diluted and tarnished as a result of the flood of counterfeits on the market.

Also, there is no guarantee that the counterfeit watch will not be given away or later resold to an unsuspecting consumer. Therefore, simply calling a counterfeit product a “replica” does not make it legal to sell.