Online trademark and IP enforcement: a brand owners perspective In this feature | intellectual property rights | trademarks online | e -commerce ImPersonation online John Ferdinand offers guidance on protecting intellectual property rights online U K consumers have embraced internet shopping in recent years. In 2015, the UK had the third-largest online retail market globally, worth an estimated 533billion. Fast-forward to the beginning of 2017, and it was reported that online sales across the entire retail sector, excluding food, grew by 18 per cent in 2016, and by 27 per cent over the previous two years. Thanks to the digital age, companies can flourish without the need for a bricks and mortar shop, and access new marketswithout the traditional investment in extensive physical distribution networks. Alongside the opportunities, e-commerce also brings challenges, particularly when it comes to intellectual property (IP). When products become available online and worldwide, the possibility of copycat products and counterfeiting activity increases dramatically. Trading standards officers (TSOs), generally, may not advise brand owners on enforcement strategies for their brands. They can, however, signpost and offer general guidance on practical ways to identify sales of possible counterfeit goods, including online marketplace complaints. This may be the case, for example, where it is not possible to give firm evidence that goods are counterfeit to the standard required by TSOs, or brand owners do not wish to proceed with criminal prosecutions. So brand owners need to look at how they can protect and enforce their rights online, and what methods are most effective. Dealing with online IP infringement When products become available online and worldwide, the possibility of copy-cat products and counterfeiting activity increases dramatically Because of the large number and frequency of [online] infringements, traditional forms of enforcement may not be completely effective or affordable There is a common thread in the online trademark and brand issues faced by brand HELP fOr IP INfrINgEmENTS owners, large and small. The huge number frOm ONLINE PLATfOrmS and frequency of infringements mean Online marketplaces and search-engine traditional forms of enforcement such as providers are becoming increasingly instigating court proceedings or issuing cease proactive in tackling infringements. and desist letters may not be completely Complaints procedures online have effective or affordable. Brand owners need to been around for a while, but they have be strategic and consider other available become more sophisticated, effective methods of taking action for the different IP and efficient over the years. infringements. The following are common When brand owners raise complaints now, online platforms can in many areas in which IP issues occur, with possible instances remove listings in a matter alternative routes of action: of days. Domain name cybersquatting: Often, Amazon has also recently launched companies face challenges when third its Brand Registry, through which owners parties register their brand names in of brands can have more visibility in domain names the names given to tackling complaints because sellers need a internet sites. This may be resolved by specific code from the brand owner to sell contacting the entities in question with products on the site. cease and desist letters to request transfer The system offers owners access to of the domain names. If not, there are powerful tools, including proprietary text dispute resolution procedures known as and image search, predictive automation based on reports of suspected IP rights Uniform Domain Name Resolution violations, and increased authority (UDRP) run by domain-name registries. over product listings with a companys These allow third-party registrations to brand name. be challenged in a less expensive way Similarly, social media platforms have than starting courtproceedings complaints procedures related to IP Unauthorised use of IP on online infringement Instagrams Help Center, marketplaces, such as Amazon, eBay for example, has a page dedicated to and Alibaba, and on social media: copyright concerns. Rather than issuing cease and desist These are just two of the new initiatives letters, brand owners can take action and examples of retailers becoming more using complaints procedures run by proactive in tackling suspected infringing or counterfeit goods queries. online marketplaces and social media Again, the more brand owners and platforms. These complaints are handled retailers can cooperate, the harder it is for very quickly and listings can be taken criminals to operate. down within days. Complaints could be based on trademark rights when third parties use product or brand names, logos, designs, or copyright in product images or packaging to attract interest. However, with social media, there can be limits on owners ability to take action where individuals use their own nicknames, or only use social media names for personal, rather than commercial, use. This means that, in some circumstances, rights owners might not be able to object to use of similar or identical user names to their trademarks, because the names are just chosen by third parties for personal reasons or social use, rather than to sell products or create an association with a particular brand name. John Lewis is one example, where a man based in the US and the British company share a name Unauthorised use of trademarks in search-engine keyword advertising: Often, competitors or counterfeiters will use another brand owners trademark to attract online traffic to their sites through keyword advertising that is, paying search engines such as Google and Bing so their brand adverts appear as sponsored links at the top of a results page. Again, complaints procedures are available for this. Action can be taken by search engines to remove adverts very quickly, but there are strict rules and they often only apply where advertisers use the brand name in the body of the advert itself, or in the website related to links that are advertised Overall strategy for IP protection online Brand owners need to be proactive and strategic in protecting different forms of IP. They should consider how infringements might occur, before making sure comprehensive IP protection is in place. For example, counterfeiters may only use part of an overall trademark, so the brand owner should consider protection for different elements of their trademarks so they can have effective enforcement strategies. As discussed above, the pace and volume of potential infringements taking place online mean traditional steps, such as cease and desist letters, are becoming increasingly ineffective and costly; often, for example, its very difficult to identify an individual counterfeiters address. As a result, brand owners should explore specific enforcementoptions for different online infringements, such as tackling online marketplace challenges, social media issues, domain-name ownership disputes and the use of trademarks in search-engine keyword advertising. Overall, brand owners need to dedicate the necessary time to the planning and development of a targeted, specific and dedicated online IP protection and enforcement strategy. This should consider all possible options for dealing with the issues, to achieve results that are commercially minded and legally effective. IP INfrINgEmENTS ONLINE Certain forms of Intellectual Property logo, packaging, product shape, products are harder to copy than (IP) are particularly common in online smell or sound that distinguishes trademarks or packaging designs infringements, including: a product or service Copyright: this protects the Patent: this protects inventions. Designs: usually the visual appearance of a product, expression of ideas, such as Usually, it takes the form of new but it can also cover logos, photos, songs and marketing technology solving a technical packaging designs, the visual copy. No registration is required, problem, but could appear in user interface, and icons used but its important to keep a quite a simple, everyday context, in software. record showing creation and such as the Anywayup Cup a Companies should consider all the ownership, just in case legal valve for toddlers beakers that above types of IP protection when protection is ever needed is designed to prevent spills. This setting up their business and, if kind of IP is not generally the necessary, employ different IP steps in source of infringements, because parallel, so that they are fully protected. Trademark: this is a badge of origin such as a word, slogan, Credits John Ferdinand is a trademark attorney at Marks & Clerk. This article is based on a presentation given at CTSI Conference in June 2017. Images: istock.com / GoodLifeStudio To share this page, in the toolbar click on You might also like Renters bill of rights December 2017