Counterfeiting “Epidemic” In Times of The “Pandemic”

2020 can easily be termed as the year of “healthcare emergency”. As the world continues to battle with the Novel Coronavirus, the novelty of this virus brought with it unprecedented amount of oblivion and fear. With mankind being forced to follow the contemporary norms of “social distancing” and “remote networking”, protective equipment became articles of inevitable significance. As masks and sanitizers became essential commodities, counterfeits raided the global markets. While several trademark infringement matters were taken to court by legitimate trademark holders, it was also observed that a collaborative effort from all ends, including e-commerce platforms, social media websites and state governments was needed to effectively combat the issue.

This article addresses an emerging trademark issue in the wake of the pandemic as a result of essential commodities falling under the garb of counterfeits.

Besides becoming a necessity, face masks also became a trendy accessory and the fashion industry responded to the latest fashion trends. This was followed by an influx of “fake” branded masks when opportunistic counterfeiters rose to the occasion. The Economic Times reported that a certain Haryana-based bedsheet manufacturer started sourcing masks bearing names of Nike, Adidas and Under Armour among various sports brands and was selling them online at low prices.[1] Several such matters came up where trademark holders took legal action against manufacturers of such counterfeit masks that were not only violating trademark rights but also risking the spread of the virus because they were sub-standard and sub-quality products.

The well-known fashion brand, Tommy Hilfiger took the matter to the Delhi High Court in the case of Tommy Hilfiger Europe BV v M/s Taqua Textiles & Ors.[2], against two Tamil Nadu manufacturers for printing their brand-name and trademark/logos on such masks. They had become aware of the infringement upon seeing an advertisement for these counterfeit masks on an e-commerce platform and upon investigating the matter they discovered that the Defendants, besides advertising and offering for sale their products on Indiamart, also advertised their counterfeit products on social media platforms such as Facebook, Instagram and Justdial. It was further discovered that these masks were also being sold through their websites www.taquatextiles.com and www.taquatextiles.in. As a result, the Plaintiff sued the Defendants for trademark infringement and passing off and the Court granted an interim injunction in their favour. The Court also observed that the Plaintiff had made a prima facie case in its favour and found that the balance of convenience also favoured the Plaintiff.

Fake branded masks have also been found crippling the international markets, causing concern to trademark holders as well as authorities around the world. 3M, a well-known American manufacturer of N95 face masks filed a lawsuit[3] against various sellers and manufacturers for using its brand, logo and registered trademark for selling “fake” N95 masks online through e-commerce portals including Amazon, at extremely high prices. [4] The Wall Street Journal reported that researchers found over 10,000 Instagram accounts selling fake 3M masks.

It should be noted that fake branded masks are not just a concern for trademark holders but there is also a larger public interest in times of the Coronavirus Pandemic because poor quality masks may have serious repercussions on the health of the users. It is believed that manufacturers of these “fake” masks who use sub quality materials may not even be aware of the medical standards required to make them in the first place. The decision of the Delhi High Court in the Tommy Hilfiger matter has shown that infringers capitalizing on the shortage of face masks and their high demand, need to be dealt with strictly and quickly.

In addition, not just masks, even other essential goods such as hand sanitizers fell into the hands of counterfeiters this year. Cases of manufacturers selling “fake” sanitizers with similar packaging and logos of popular brands came to light following which health warnings were issued to inform consumers not to buy sanitizers from brands which were not approved by the Food and Drug Authority.[5] Fake hand sanitizer manufacturers were busted by the police in Hyderabad in March this year and as per the reports, that they had already sold 1.4 crore Rupees ($ 1,90,0000 approx.) worth of fake products.[6] This was just one of several cases reported that once again drew light on the matter at hand, which was the sale of counterfeit Covid-19 related products by opportunistic manufacturers and the need for strict vigilance from all ends.

To conclude, counterfeit products have always been a major concern for trademark holders, and this year, in the wake of the Pandemic, counterfeit healthcare, and protective products related to the Virus saw a boom in sales, making them an even bigger concern. Earlier this year, Interpol conducted an operation which involved the seizure of counterfeit hand sanitizers, masks, PPE kits and antiviral drugs from over 90 countries across the world.[7] E-commerce portals also took stringent measures to take down such counterfeit products through their own vigilance as well as their complaints system. Earlier this year, Amazon identified this issue and took a strict approach towards curbing the sale of these “fake” masks and sanitizers by issuing a statement stating that it is “not accepting applications to sell these products at this time”.[8] It was also reported in March 2020 that EBay had banned all listings for N95 and N100 face masks, hand sanitizers and alcohol wipes.[9] In an interview with News18, India, it was identified that certain “fake” masks were taken down or put “out of stock” on Flipkart, Snapdeal and other e-commerce portals when the matter was complained about on social media.[10]

Therefore, while it can be seen that action is being taken by the authorities in this regard, since there is also a high influx of such counterfeit products in the market, more is needed from all ends to effectively combat such counterfeiters. There is also a need for consumers to remain aware and watch out for fake products. These matters have once again highlighted that curbing the sale and promotion of counterfeit products online is the need of the hour and legislative measures in this regard ought to be taken soon.

For any questions, please write to the author, Vrinda Sehgal, Associate, at vrinda@iprattorneys.com.

[1] https://economictimes.indiatimes.com/small-biz/startups/newsbuzz/fake-amul-swiggy-nike-masks-hit-the-market/articleshow/76320107.cms?utm_source=contentofinterest&utm_medium=text&utm_campaign=cppst [2] https://www.livelaw.in/pdf_upload/pdf_upload-376137.pdf [3] https://cdn.vox-cdn.com/uploads/chorus_asset/file/20026410/document_1_.pdf [4] https://www.wsj.com/articles/3m-sues-mask-seller-for-alleged-gouging-trademark-infringement-11586529025 [5] https://www.hindustantimes.com/mumbai-news/corona-outbreak-don-t-buy-non-fda-approved-sub-standard-hand-sanitisers/story-Vbsl9JVZjc5ga66hP36oJL.html [6] https://www.indiatoday.in/india/story/fake-sanitiser-racket-busted-in-hyderabad-after-1-lakh-bottles-sold-for-rs-1-4-crore-1656765-2020-03-18 [7] https://www.interpol.int/en/News-and-Events/News/2020/Global-operation-sees-a-rise-in-fake-medical-products-related-to-COVID-19 [8] https://retail.economictimes.indiatimes.com/news/e-commerce/e-tailing/amazon-ups-restrictions-on-sellers-of-hand-sanitisers-masks/74591762 [9] https://retail.economictimes.indiatimes.com/news/e-commerce/e-tailing/amazon-ups-restrictions-on-sellers-of-hand-sanitisers-masks/74591762 [10] https://images.news18.com/ibnlive/uploads/2020/04/1588083642_fake-products-ecomm-image-2.jpg?impolicy=website&width=0&height=0