Counterfeiting

Introduction

In the sports sector, the effectiveness of the fight against counterfeiting largely depends on anticipation. Counterfeiters exploit peaks in demand surrounding World Cups, international tournaments, finals and new kit launches to distribute illicit jerseys, accessories and merchandise at speed. The same offer may move simultaneously across a marketplace, social-media account, second-hand platform and fraudulent website built around an abusive domain name.

An effective strategy is based on four priorities:

• maintaining immediately enforceable rights,
• detecting infringements early,
• preserving reliable evidence,
• coordinating online, customs and judicial action.

This approach reflects the short commercial cycle of major sports events: once a competition begins, the time available to identify sellers, interrupt sales and contain trademark damage becomes much more limited.

Why is sport particularly exposed to counterfeiting?

Major events concentrate demand within a short commercial window

The commercial value of sports merchandise is closely tied to current events. Qualification for a tournament, a final or the launch of a new jersey can produce an immediate rise in demand. Counterfeiters seek to capture that window before public attention moves on. EUIPO has estimated that counterfeit sports equipment causes approximately EUR 851 million in lost sales each year in the European Union, equivalent to around 11% of sector sales. The economic loss is compounded by reputational and consumer-safety risks.

For a broader analysis of the commercial value of sports IP, see our article: “How does intellectual property protect the economic value of sport?”

Infringement now moves across several channels

Sports counterfeiting is no longer confined to physical sales near a stadium. Ephemeral social-media accounts may advertise products, redirect buyers to a fraudulent site and then reappear under a different identifier. Live selling creates a further evidential challenge: the visible content can disappear within hours while accounts, payment mechanisms, domains and logistics remain traceable. It is therefore necessary to monitor not only the products themselves, but also the commercial infrastructure that enables their distribution.

How can counterfeiting be anticipated before a sporting event?

Build an IP portfolio that can actually be enforced

The first task is to identify which rights can be invoked immediately. We map word and figurative trademarks, logos, emblems, designs, graphic works, photographs and other assets used on official products. Territorial coverage should reflect sales markets, host countries and the principal entry points for goods. Strategic domain names should likewise be secured before demand peaks.

Prepare customs controls before goods reach the market

A customs Application for Action turns an IP portfolio into an operational enforcement tool. It enables a right holder to request detention of goods suspected of infringing its rights. To be useful in practice, the file should give officers immediately actionable information: photographs of authentic products, technical features, packaging, authorised distribution channels and known counterfeit indicators. The fragmentation of e-commerce shipments makes this preparation particularly important.

For further guidance, we invite you to read our article on: “Customs Surveillance in Intellectual Property Matters”

How can counterfeiting be tackled quickly during a sporting competition?

Preserve evidence before requesting removal

The removal of a listing must not result in the disappearance of evidence necessary to establish the infringement. Before submitting any report, the following information should be preserved: the URL, the account identifier, the date, photographs, the price, the description, any available seller contact details, and the transaction process. Under French trademark law, infringement may be proved by any means, and infringement seizure remains a central mechanism where stronger court-ready evidence is required.

Combine platform, domain-name, customs and judicial measures

An effective strategy avoids treating each infringement as an isolated incident. Once the evidence has been secured, platform notification mechanisms, in particular the notice-and-action mechanism provided for under the Digital Services Act, can be used alongside domain-name analysis, requests to intermediaries and, where urgency requires it, court measures.

Intelligence obtained from a physical seizure should in turn feed online monitoring to identify additional sellers and accounts.

Which practical measures support a sustainable anti-counterfeiting strategy?

• Map the trademarks, designs, creative assets and merchandise requiring protection before each season or major competition.
• Align filings and territorial coverage with sales markets, host countries and the principal entry points for goods.
• Record relevant rights with customs mechanisms and the IP-protection programmes operated by major platforms.
• Implement coordinated monitoring of marketplaces, social media, second-hand platforms and domain-name registrations.
• Adopt an evidence-preservation protocol before any takedown request or account closure.
• Share intelligence between legal, security, e-commerce, customs and local counsel teams so that each enforcement action informs the next.

Conclusion

In sport and counterfeiting, speed of enforcement is directly determined by the level of preparation. A coherent IP portfolio, operational customs applications, continuous monitoring and a clear evidence protocol make it possible to act during the short period in which illicit sales are most damaging. The strongest strategy creates an intelligence loop: online signals guide physical controls, while a seizure or test purchase can reveal new sellers, accounts and domain names.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Can a federation take action where a product copies its team colours without reproducing the logo?

It depends on the rights available and on the presentation of the product. Colours may be protected in certain configurations, including where they form part of a valid and distinctive trademark right. Otherwise, unfair competition, free-riding or the reproduction of other distinctive elements may need to be considered

Can a sponsor act against products that falsely suggest an official association with a sporting event?

Yes, where its own rights or commercial interests are affected. Unauthorised use of the sponsor’s trademark may fall within trademark law, while a presentation that artificially creates a commercial association may also raise issues under misleading-practice or unfair-competition rules.

Who bears the storage or destruction costs for goods detained by customs?

The EU Regulation on customs enforcement provides that certain costs may be borne by the right holder who requested customs action, subject to the applicable national rules and the circumstances of the case. This should be anticipated when budgeting for a large-scale customs enforcement campaign.

Does a customs detention in one Member State automatically block the same goods throughout the European Union?

A Union application can support action in several Member States, but each inspection and detention is carried out by the competent customs authority in its own territory. Geographic coordination of the application and the information supplied to customs therefore remains important.

Can clubs and sports federations take action against unofficial products sold around a stadium?

Yes, provided that they hold enforceable rights and can establish the infringement. In practice, the sale of such products in the vicinity of a sporting event may increase the risk of confusion with official or authorized merchandise.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances nor to constitute legal advice.

Introduction

To avoid copyright infringement when using artificial intelligence, a business should control three stages:

• the documents and data supplied to the tool,
• the instruction given to the AI system,
• the content ultimately released.

In AI terminology, these are often called the “input”, “prompt” and “output”. The input is the material supplied to the system, the prompt is the instruction, and the output is the generated text, image, code, video or audio. These technical terms describe the process; they do not determine ownership or whether the result may lawfully be exploited.

Even where the provider permits commercial use of an output, it does not necessarily guarantee that the output does not reproduce a third party’s work. The business consequences are practical: withdrawal of a campaign, platform removal, redesign costs, a licence demand, infringement proceedings or reputational damage. The appropriate response is not to prohibit AI, but to apply controls proportionate to the value, audience and expected lifetime of the content.

Why can AI-generated content infringe copyright?

Under French law, Article L. 122-4 of the Intellectual Property Code prohibits the unauthorised reproduction, representation, adaptation or transformation of a protected work. “Right holders” include persons or companies to whom the author’s rights have been transferred. Copyright infringement means the unauthorised exploitation of original elements of a work. Using AI does not change the rule: a business may incur liability where it releases an output containing such elements, even if they were generated automatically.

The assessment is not limited to a similarity percentage. The Court of Justice of the European Union considers whether the creative choices of the earlier work remain recognisable in the disputed material (CJEU, December 4, 2025, Joined Cases C-580/23 and C-795/23). A shared idea, theme or general mood is usually insufficient. Risk increases where the output retains a particular composition, original wording, an individualised character, a sequence of scenes, a melody or other identifiable expressive elements.

Prompts requesting content “in the style of” an artist therefore require caution. Copyright does not generally protect an abstract style, but copying precise elements may be unlawful.

Other rights may also apply:

• Moral rights protect, among other matters, the author’s name and the integrity of the work ;
• Trademarks ;
• Designs ;
• Image or voice rights ;
• Unfair competition and rules against misleading commercial practices may also be relevant.

A business review should therefore extend beyond copyright alone.

How should content and instructions supplied to an AI system be secured?

Distinguishing the two situations that may expose the user to risk

• Where the user provides a protected work to the AI system, such as an image, text, video or piece of music, they must check that they are authorised to copy, modify and use it to generate new content. The fact that a document is available online does not mean that it is free to use. The risk is particularly significant where the user asks the AI to reproduce the work, retain its composition or reuse its recognisable creative elements.
• Where the user enters only a prompt, without uploading any document, the generated output may nevertheless closely resemble an existing work. The user may be unaware of that work and may not have requested its reproduction, but this does not automatically eliminate the risk of infringement. Before any publication or commercial use, the business should therefore check whether the output reproduces specific and recognisable elements of an earlier creation. Where doubt remains, it is preferable to regenerate the content, modify it substantially or refrain from using it.

For a broader overview of the protection of AI-generated content, we invite you to read our article: "Copyright and Generative AI".

Exclude prompts that request or facilitate copying a copyright-protected work

The instruction should not enable copying of any protected content. A request to reproduce, continue or faithfully imitate an identified work creates a direct risk. By contrast, asking for an original analysis based on facts, without reusing the wording, structure or examples of the sources, reduces that risk. It does not eliminate it: the output must still be reviewed, compared and, where the stakes justify it, legally approved before release.

Teams should also avoid combining, without a genuine need, the name of an author or artist, the title of a work, a protected character, a trade mark and highly detailed composition instructions. Prompts, successive versions, authorised sources and human changes should be retained. This record helps demonstrate an independent creation process, speeds up internal approval and supports an effective response if a claim is made.

How should an AI-generated output be reviewed before release?

Apply a review proportionate to the commercial risk

Before external release, a business should apply a pre-publication legal review of the relevant rights before publication. The review may be light for an internal draft, but it should be strengthened for an advertising campaign, product launch, high-audience content, distributed software or material intended for use in several countries:

• Identify elements that may be protected and the works, trade marks, individuals or content to which the output appears to refer;
• Carry out searches suited to the format and assess whether recognisable creative choices have been reproduced, rather than relying only on an automated similarity score;
• Make a documented decision: approve the output, redesign it substantially, generate a new version, obtain a licence or discard it.

Similarity software may flag a concern, but it does not replace human judgement. Changing a few words, colours or details is insufficient where the essential creative structure remains recognisable. The scope of review should reflect the audience, budget, territories, exploitation period, brand visibility and the difficulty of withdrawing the content after publication. The higher the cost of removal, the earlier clearance should occur.

Adapt the review to the relevant format

Text and software:

For text, the review should cover unusual wording, quotations, titles, highly specific structures and lengthy passages. For software, it should include licence notices, comments, characteristic code blocks and dependencies. Functional code may contain open-source components subject to attribution, share-alike or source-disclosure duties. Those duties must be compatible with the business model, cybersecurity policy and customer commitments.

Images, video and audio:

For images, reverse-image searches and visual comparisons should cover composition, characters, settings, logos and distinctive details. Video and audio reviews should examine clips, scripts, shots, lyrics, melodies, arrangements, performances and voices. Since August 2, 2026, Article 50 of the AI Act and the European Commission guidelines also impose certain transparency duties, particularly for deepfakes, meaning manipulated content that makes a person appear to have said or done something. Disclosure that content was generated or altered by AI may be mandatory, but it does not cure infringement of third-party rights.

What legal and operational governance should a business implement?

Select tools on the basis of verifiable safeguards

Before approving a tool, legal, procurement, security and business teams should review five points:

• rights in inputs and outputs,
• provider reuse of data,
• prohibited uses,
• third-party rights warranties,
• indemnification.

Indemnification is the provider’s potential commitment to cover some or all costs of a claim. A commercial-use clause only governs the relationship with the provider; it is not a rights clearance and does not constitute permission from owners whose protected material may appear in the output.

Under Article 53 of the AI Act, providers of general-purpose AI models third-party rights warranties must maintain a policy for compliance with EU copyright law and publish a sufficiently detailed summary of training content. This information can support supplier selection, but it does not guarantee each output or transfer to the provider all responsibility for content released by the business.

Assign responsibility and retain evidence

An effective internal policy identifies approved tools, information that must never be supplied, uses requiring approval and the person accountable for the final decision. Projects can be classified by risk. Improving an internal draft may require limited review; a public campaign, cloned voice, code incorporated into a product or an image involving an identifiable individual justifies enhanced legal and business approval. This structure prevents low-risk projects from being delayed by controls designed for high-risk uses.

Agreements with agencies, studios and contractors should require disclosure of AI use, identification of relevant tools, compliance with licences, delivery of prompts and sources where appropriate, and warranties tailored to the intended exploitation. Internally, the approval file should include searches, licences, rejected versions, human changes and the release decision. This documentation supports a rapid decision to maintain, modify or withdraw content and, where necessary, recovery against the responsible supplier.

For further guidance on ownership and contractual arrangements, we invite you to read our articles: “How can one secure or assign rights in a work created with the assistance of artificial intelligence?” and our analysis of " Can artificial intelligence be freely used in the workplace? ".

Conclusion

Avoiding copyright infringement when using artificial intelligence does not require businesses to prevent innovation. AI should be treated like any other production tool: use authorised sources, avoid prompts that request copying, review outputs, assign human review and implement suitable contracts. The main difference is the speed of generation and limited visibility over the precise origin of some results, which makes traceability essential.

The business objective is to secure market release without imposing a full legal review on every use. A risk-based process reserves in-depth analysis for the most exposed content. Where serious doubt remains, release should be suspended until a licence has been obtained, a sufficiently different version has been produced or a targeted legal assessment has been completed.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Can a work created with the assistance of AI be protected by copyright?

Protection may be available where the final work reflects precise human creative choices, for example in selection, composition, structure or editing. A general prompt may not be enough. The business should be able to identify the human contributions and organise ownership of the corresponding rights by contract.

Does a Creative Commons licence always permit use of a work with AI?

No. Creative Commons licences do not all permit the same uses. Attribution, commercial use, adaptations and share-alike requirements must be checked. Supplying the work to the AI system, transforming it and exploiting the output are separate acts.

Must a business tell its customers that AI was used to produce content?

This depends on the contract, sector, content and applicable rules. Disclosure may be necessary where AI use affects customer warranties, involves personal data or concerns a deepfake. Even where it is not mandatory, a clear clause reduces misunderstandings about the production method and responsibility.

How long should evidence of the AI-assisted creation process be retained?

There is no single retention period. It depends on exploitation, contractual warranties, time limits for claims and the project’s value. For a major campaign, software product or reusable asset, it is prudent to retain prompts, sources, licences, versions and approvals throughout exploitation and beyond.

Does an indemnity offered by an AI provider fully protect the business?

Rarely. Indemnities often exclude claims arising from prompts, output modifications, user-supplied content or particular territories. Recovery may also be capped. The business should compare the indemnity with the project’s actual financial exposure and confirm that the relevant uses and countries are covered.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Introduction

The French infringement seizure is one of the most effective evidentiary mechanisms available to intellectual property rights holders. Authorized by a judge and generally carried out without prior warning, it enables evidence to be collected directly at premises where allegedly infringing products, processes, documents or digital data may be found.

This powerful procedure remains strictly regulated. An imprecise application, operations exceeding the judicial authorization or failure to commence proceedings within the applicable deadline may undermine the entire enforcement strategy.

Establishment of the material facts of the infringement

Although counterfeiting may be proved by any lawful means, an infringement seizure offers a decisive advantage: it provides access to evidence located at the alleged infringer’s premises or held by an intermediary involved in manufacturing, storage or distribution.

Depending on the court order, the French enforcement officer, known as a commissaire de justice, may prepare a detailed description, take photographs, collect samples or physically seize the disputed products and related documents. Equipment and instruments used to manufacture or distribute the allegedly infringing products may also be covered.

The procedure may notably be used to protect trademarks and trade names; patents and industrial processes; registered designs; copyright works, software and databases; geographical indications and plant variety rights.

The operations must remain within the precise limits of the order. The measure does not give the claimant or its appointed expert a general power to investigate the targeted company’s activities.

Trace the origin, network and scale of the infringement

The objective is not merely to locate an infringing product. The rights holder will often need to establish the quantities manufactured, imported, stored or sold; the date on which the disputed activity began; the identity of suppliers, subcontractors and distributors; the prices charged and revenue generated.

The order may therefore authorize access to invoices, purchase orders, inventories, catalogues, commercial records and accounting documents. In digital disputes, it may cover design files, version histories, source-code repositories, technical logs or emails, provided that the searches are specifically and proportionately defined.

Verification of the rights and the initial evidence

Before filing the application, we must confirm the ownership, apparent validity and territorial scope of the asserted IP right, as well as the claimant’s standing. For a trademark, this review may include the registration, the covered goods and services, recorded assignments or licenses and, where relevant, available evidence of genuine use.

An infringement seizure should not be used to search randomly for a possible infringement. The application should be supported by sufficiently concrete indications, such as a test purchase, photograph, catalogue, online offer, invoice, witness statement, webpage capture or technical comparison.

Definition of a precise and proportionate judicial mission

The application is made without notice to the president of the competent judicial court. While this preserves the element of surprise, it also requires the claimant to present the relevant circumstances fairly and comprehensively.

The application should identify the premises concerned, the rights relied upon, the requested operations, the documents or data sought, the proposed experts and the safeguards needed to protect confidential information.

The safeguards to reduce the risk of invalidity

The first precaution to adopt is to engage proceedings within the mandatory deadline. An infringement seizure is provisional. In French trademark matters, the claimant must commence civil or criminal proceedings within 20 working days or 31 calendar days, whichever period is longer, calculated from the date of the seizure or description. Otherwise, the measure may be set aside at the request of the targeted party.

The statement of claim should therefore be prepared alongside the application rather than after the seizure report has been delivered.

Protecting trade secrets and personal data is a second precaution to adopt. The operations may reveal commercially sensitive information unrelated to the dispute, including formulas, manufacturing methods, pricing conditions, customer files or research projects. The judge may order that disputed documents be placed in provisional sequestration, preventing their immediate disclosure to the claimant.

Personal data must also be relevant and limited to what is necessary for preparing, pursuing or enforcing the legal claim. Access, retention and disclosure must remain proportionate to that purpose.

For further information, we invite you to read our article: How can infringement seizures and trade-secret protection be reconciled without exposing a company’s confidential information?

What operational method should be followed?

Before the seizure:

• audit the asserted rights and preserve the initial evidence;
• map the relevant premises, individuals, records and systems;
• prepare the application and the main proceedings in parallel.

During the seizure:

• remain strictly within the judicial authorization;
• record any significant incident or statement;
• isolate confidential or irrelevant documents.

After the seizure:

• analyse the report and exhibits immediately;
• calculate the deadline for commencing the main action;
• formulate the claims for injunctions, information and damages.

Conclusion

The infringement seizure is a major legal tool in intellectual property litigation since it converts suspicions into evidence capable of being relied upon before the court. It can establish the infringement, trace manufacturing and distribution networks and measure the economic scale of the disputed activity.

Dreyfus Law Firm assists its clients in managing complex intellectual property cases, offering personalized advice and comprehensive operational support for the complete protection of intellectual property.

Dreyfus Law Firm works in partnership with a global network of attorneys specializing in Intellectual Property.

Q&A

Can the procedure be carried out without warning the targeted company?

The court order is generally issued without a prior adversarial hearing to prevent evidence from being concealed, altered or destroyed.

Can computers and emails be examined?

Digital data may be described or copied where the order expressly permits it. Searches should be limited by date, file category, location or relevant keywords.

Can the targeted company refuse access to its premises?

It may make reservations, contact its legal counsel and exercise the available remedies, but it must not obstruct the lawful execution of the court order.

How does it differ from a customs detention?

An infringement seizure is a court-authorized evidence-gathering measure. A customs detention enables customs authorities to hold suspected counterfeit goods temporarily, particularly at borders.

What happens if the operations exceed the court order?

The irregular operations may be challenged and potentially invalidated. Disproportionate execution may also expose the claimant to a damages claim.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.

Wine counterfeiting is a growing concern in the U.S. and worldwide. Fraudsters may illegally use a producer’s trademark, replicate a label design, or falsely claim an American Viticultural Area (AVA) to profit from a winery’s hard-earned reputation. Whether you’re a boutique producer in Napa Valley or a large-scale winery in Washington State, safeguarding your brand identity is vital to maintaining consumer trust and financial stability.

This article explains how to detect and respond to wine counterfeiting or misuse of a brand or appellation in the United States, covering the legal frameworks, best practices to protect your winery’s image, and the scope of possible actions—both domestically and internationally.

Understanding Wine Counterfeiting in the U.S. Market

General Definition of Counterfeiting

In broad terms, counterfeiting involves the unauthorized reproduction or imitation of protected intellectual property (IP). Within the wine industry, this may include:

• Unauthorized use of a registered trademark
  Example: A bottler selling lower-quality wine under a recognized name to capitalize on that brand’s reputation.
• Label or packaging replication
  Fraudsters may closely imitate or replicate a legitimate producer’s labels, logos, or overall design to deceive consumers.
• Improper AVA or regional claims
  Using a term like “Napa Valley” or “Willamette Valley” without meeting federal and state AVA requirements (e.g., TTB rules) constitutes a form of geographic misrepresentation.

Economic and Safety Ramifications

• Brand damage: Substandard counterfeit wines can undermine a producer’s reputation for quality.
• Financial losses: Industry groups, such as the Wine Institute, estimate that counterfeits and misleading labeling cost U.S. wine producers millions of dollars in lost revenue.
• Health concerns: Some counterfeit wines contain unregulated or unsafe ingredients, putting consumers at risk.

International Context

American wines, especially those from prestigious AVAs like Napa Valley, Sonoma County, or the Willamette Valley, are in high demand globally. Counterfeiters may exploit brand recognition to sell imitation products in overseas markets. U.S. producers often need to secure trademark or brand protection abroad (e.g., via the Madrid System under the World Intellectual Property Organization, or direct filings in target export countries).

Types of Infringement: Brand, Appellation, and Mislabeling

Brand Infringement

When someone else uses your federally registered (or common law) trademark without permission, they may:

• Directly copy your brand name or logo.
• Adopt a confusingly similar name (e.g., changing one letter or adding a minor word) to trade on your brand’s goodwill.
• Mimic your label design (colors, fonts, layout) to deceive consumers.

Appellation Misrepresentation

In the U.S., American Viticultural Areas (AVAs) are geographically defined wine-growing regions certified by the Alcohol and Tobacco Tax and Trade Bureau (TTB). Misrepresentation includes:

• Using an AVA name improperly
  For instance, labeling a wine “Napa Valley” when less than 85% of the grapes are from Napa or if the wine doesn’t meet other TTB requirements.
• Falsely suggesting a region
  Terms like “Champagne,” “Port,” or “Burgundy” have international naming regulations. In the U.S., some of these names may be grandfathered for older producers, but new labels generally must comply with truth-in-labeling rules.

Illicit Labeling Practices

Even if a producer isn’t directly stealing a brand name, they might violate TTB regulations by listing false or misleading descriptors on the label. Examples include:

• Incorrect varietal or vintage claims
• Bogus designations such as “reserve,” “estate,” or “old vine,” if those terms are not accurate or recognized.
• Misleading references to sustainability, organic certification, or production methods.

Detecting Counterfeit Wines and Gathering Evidence

Red Flags

• Unusually low prices for wines purportedly from a high-end region or producer.
• Suspicious distribution channels—online auctions, gray-market retailers, or unknown importers.
• Label inconsistencies—poor print quality, incorrect typographical details, missing mandatory warnings or TTB-required information.

Documenting the Infringement

Compiling evidence is essential before initiating legal action or a cease-and-desist letter:

• Photographs or scans of the suspect label: capture the front and back labels, cork, capsule, and any serial markings.
• Invoices or receipts to show the source and price of the counterfeit wine.
• Lab analysis (if appropriate): Forensic testing may confirm that the liquid does not match the legitimate wine’s chemical profile.

Practical Tip: Retain physical samples of the alleged counterfeit bottles, ideally sealed and notarized or documented by a legal professional, to serve as proof during litigation or TTB review.

The Value of Ongoing Monitoring

• Trademark watch services: Engage a specialized agency or use USPTO watch services to identify potentially infringing or confusingly similar marks.
• Market checks: Periodically review online stores (domestic and international) and local retailers, especially in emerging markets where counterfeits are more common.

Legal Remedies and Enforcement Options

The Cease-and-Desist Letter

Often the first step, a cease-and-desist letter formally notifies the infringer that they must:

1. Immediately stop using the brand, label, or appellation.
2. Remove infringing products from the market.
3. Destroy or surrender remaining inventory.
4. Pay damages or seek a settlement for lost revenue and harm to reputation.

In some cases, if the violation is unintentional or minor, the infringer may comply to avoid legal escalation.

Litigation and Court Actions

If the infringer refuses to comply or the financial harm is substantial, a winery can pursue legal action:

• Civil suit in federal court: This can yield damages (including treble damages for willful infringement), injunctive relief to stop further infringement, and potential recovery of attorneys’ fees.
• Criminal prosecution: For egregious counterfeiting operations, law enforcement agencies (like the FBI or local authorities) might get involved if there is evidence of fraud, smuggling, or organized crime.

Example: Large-scale counterfeit rings selling imitation Napa Valley Cabernet abroad might face federal charges for violating trademark laws, wire fraud, or even money laundering statutes.

Role of U.S. Customs and Border Protection (CBP)

For import or export of counterfeit products, CBP can detain or seize shipments at U.S. ports of entry if a brand owner has recorded its trademark with the agency’s Intellectual Property Rights (IPR) e-Recordation system. This prevents counterfeit goods from entering (or leaving) the United States, saving brand owners from chasing infringers post-distribution.

Case Studies, Statistics, and a Hypothetical Example

Notable Case: Counterfeit “Napa” Wines in Asia

Groups like Napa Valley Vintners have periodically confronted counterfeiters producing “Napa” wines in China and other parts of Asia using imitation labels.

• Approach: They collaborate with U.S. and foreign authorities, leveraging trademark registrations and local enforcement.
• Result: Seized counterfeit stock, criminal fines for producers, and improved AVA recognition in key markets.

Stats on Economic Impact

A 2025 study cited by the Wine Institute (wineinstitute.org) estimated that global counterfeiting of American-made wines accounted for over $500 million in annual losses. High-profile AVAs, such as Napa Valley and Sonoma County, were the primary targets, but smaller regional producers have also been affected.

Hypothetical Example: “Sundown Cellars”

“Sundown Cellars,” a Washington-based winery, discovers an online retailer selling bottles labeled “Sundown Estates” with an almost identical logo and design.

1. Evidence gathering: They purchase samples, photograph the counterfeit label, and retain invoices.
2. Cease-and-desist: The winery sends a formal demand letter to the retailer and the purported importer.
3. Litigation: The retailer refuses to comply. Sundown Cellars files a trademark infringement lawsuit in U.S. federal court.
4. Outcome: The court issues an injunction, orders destruction of the infringing stock, and awards damages to Sundown Cellars.

Best Practices to Prevent Counterfeits and Protect Your Wine Brand

Proactively Register Your Brand

• USPTO trademark registration: Filing with the U.S. Patent and Trademark Office is crucial for nationwide protection.
• State registrations: May offer limited local coverage, but if you plan to sell across state lines, a federal mark is essential.
• International coverage: For export markets, consider the Madrid Protocol or direct filings in strategic countries.

Enhance Label Security and Traceability

• Advanced label features: Holograms, microtext, QR codes, or serialized capsules.
• Batch and lot tracking: Use scannable barcodes or RFID technology to confirm authenticity.
• Blockchain solutions: Some wineries are experimenting with blockchain to provide an immutable record of each bottle’s journey from grape to shelf.

Implement a Vigilant Monitoring Strategy

• Online surveillance: Regularly check e-commerce platforms and auction sites for suspicious listings.
• Collaboration with industry groups: Associations like Napa Valley Vintners, Sonoma County Vintners, Washington Wine Institute, etc., can share intelligence and coordinate legal actions.
• Customs enforcement: Record trademarks with CBP to interdict counterfeit shipments at borders.

Conclusion and Call to Action

Wine counterfeiting is not just an economic threat; it poses a significant risk to your brand’s integrity. As more consumers discover and appreciate U.S. wines, counterfeiters grow increasingly sophisticated. Proactive legal registrations, robust label security features, and rigorous market monitoring form the backbone of an effective anti-counterfeiting strategy.

By securing federal and international trademarks, collaborating with enforcement agencies, and acting swiftly when a counterfeit is discovered, wineries can protect their hard-earned reputations and safeguard their revenue.

Why Work with Dreyfus?

• Recognized Expertise: Our team has over 20 years of experience combating IP infringement, with a deep understanding of wine industry challenges.
• Global Network: We collaborate with partners worldwide to address counterfeits and brand abuses in key wine markets.
• Customized Approach: We develop tailored strategies that combine trademark registrations, monitoring solutions, and decisive legal actions.

The cabinet Dreyfus et Associés is in partnership with a worldwide network of lawyers specialized in Intellectual Property.

Dealing with wine counterfeiting or brand misuse?

• Contact us for an immediate assessment of your case.
• Subscribe to our newsletter for the latest legal developments in wine and intellectual property.
• Download our guide, “7 Essential Steps to Combat Wine Counterfeiting,” featuring case studies and a comprehensive checklist.

Useful External Links

• USPTO: uspto.gov
• TTB: ttb.gov
• Wine Institute: wineinstitute.org
• WIPO: wipo.int
• U.S. Customs and Border Protection (CBP): cbp.gov

Protect your legacy and ensure that every bottle bearing your name meets the standards and authenticity your customers expect.