Protecting brands online: Strategic approaches to enforcement
Online brand protection can seem a herculean task – we set out the strategies to keep IP safe in the digital space
The digital landscape moves fast, and there is a plethora of methods by which infringers profit illegally from other people’s brands. In a fast-evolving field, it’s key for practitioners to appreciate the different strategies that they can offer their clients.
Without an online protection and enforcement strategy, companies can find themselves playing a protracted game of whack-a-mole as they seek to address threats.
In a CITMA webinar, Nick Bowie, Chartered Trade Mark Attorney at Lewis Silkin LLP, drew on his extensive expertise in digital enforcement handling, content monitoring, and complex infringement issues to offer step-by-step guidance on taking a strategic approach to online enforcement.
Identify the problems and their impact
The first step in developing an online brand protection strategy is to identify the infringement problems the brand is experiencing, and to understand why these problems are undesirable.
Infringement problems could include counterfeit products offered for sale, phishing scams attempting to dupe customers into sharing their financial information, or infringing copies of media content.
The impacts may include lost revenue, reputational damage from low-quality or dangerous counterfeit products, or brand damage from association with identity theft, among other undesirable effects.
Decide on the strategy’s aim and how you will measure success
In an ideal world, the aim would be to stop the problem entirely.
However, given the imbalance of scale and resources between brands and bad actors, this is rarely achievable.
Instead, a viable strategy could aim to disrupt the infringers, making the brand more difficult or risky to infringe.
Disruptive approaches might include educating consumers about the risks of buying fake products.
You could also seek to establish a legal precedent for infringement liability among intermediaries such as online marketplaces, putting pressure on them to improve their infringement detection and handling processes.
Identifying success
Your aim must be realistic, and success should be measurable. It may not be easy to identify the number of sales conversions achieved from diverting consumers away from fake products (though Nick advises that in-house legal teams should definitely stake their claim to any sales increase!).
However, other metrics could include:
- Target response rates
- The number of website takedowns achieved
- Number of infringing domain names cancelled.
Understand the budget available and the impact of actions
Brands may not have a dedicated online enforcement budget, but they can be resourceful in tackling the issue.
An enforcement programme may fund itself if litigation succeeds in securing financial damages, for example.
If there is no budget at all, success may still be achieved through collaborating with law enforcement agencies such as the Police Intellectual Property Crime Unit (PIPCU), trading standards, or regional law enforcement.
There is unlikely to be a one-size-fits-all approach to online brand protection. With that in mind, a mix of tools should be used with an individual brand’s challenges and strengths in consideration.
This can allow brands to elevate the level of brand protection, educate customers, and dissuade infringers from targeting the brand.
Conduct robust monitoring and investigations
Once a problem has been identified, the next steps are to gather context, determine where the problem originates and discover who is behind it, before deciding on an approach.
In-house investigations may uncover some of this information, but typically more tools are needed to gain the full picture.
A key instrument is a Norwich Pharmacal Order. This is a court order granted against third parties, that are engaged (whether innocently or not) in wrongdoing, requiring them to disclose documents or information.
It is a powerful tool for getting information about wrong-doers from intermediaries such as ecommerce platforms or internet service providers. It is a relatively straightforward undertaking and, while the applicant must pay respondents’ legal costs and cover the reasonable cost of providing disclosures, these are not typically onerous.
Engaging in early dialogue with intermediaries can remove the need to apply for a court order, as many are open to assisting rights holders. They may also receive large volumes of requests and have established formats and legal entities that they prefer using to handle them. In this case, the rights holder should check that the entity is within the relevant jurisdiction.
Select appropriate enforcement and legal tools
Once your investigation has identified the infringer you have a range of options. The approach you take depends on the aims of the rights holder and how success is measured, modified according to the nature of the activity being targeted.
A Cease and Desist (C&D) letter is a traditional first step. This can be delivered by post or in-person and is especially relevant for pre-action conduct if the rights holder is considering litigation.
It can also prove an opportunity to directly educate infringers through “knock and talk” activity to explain the contents of the C&D letter. This may result in swift resolution.
Tone is crucial. A heavy-handed letter aimed at educating customers can result in negative PR, while a letter without sufficient weight will not make wrong-doers change their behaviour.
If the rights-holder’s primary aim is to educate customers on the problem and risks of infringement or to deter wrongdoers with evidence of successful prosecutions, it is useful to work with the company’s PR and communications team to ensure any message is amplified in the right way. A strong media campaign can also encourage intermediaries to increase their brand protection policies and procedures.
If the problem is large-scale, C&D letters are not likely to be effective, and litigation not scalable due to costs. Instead, disruption is the more effective approach. Rights holders can engage in a programme of takedown notices through intermediaries such as hosting services, ecommerce platforms, and payment processors, making it harder for infringers to turn a profit.
Rights holders must, however, be prepared to proceed to litigation if necessary. Gaining a reputation for “all bark and no bite” will not deter infringers. Establishing precedent through litigation – especially in new or growing technology areas – provides clarity and a strong deterrent effect.
Engage with intermediaries
Establishing good relationships with intermediaries such as ISPs, ecommerce platforms, search engines, and payment providers is a valuable tactic in online protection. Responsible and responsive intermediaries can help rights owners tackle issues including infringing adwords, misleading domain registrations, phishing campaigns, counterfeits, grey imports, piracy, and ID theft.
The most advanced platforms, such as Amazon and eBay, have established procedures for complaints and use machine learning to support anti-infringement. This means regularly submitted takedown actions will eventually “teach” the AI to act before infringing products or domains are listed.
Not all intermediaries are willing to collaborate. Some may be more concerned about their users’ perceived rights and may only be willing to act when coerced by law. In this case, a blocking injunction can be granted against an ISP or other intermediary where that service provider has actual knowledge of another person using their service to infringe copyright. This injunction can be used dynamically to block repeated infringements or even to address the as-yet unidentified, but likely, infringements around one-off live events such as sports fixtures, for example.
Future-proofing online protection
The online world moves fast. Online protection teams must stay up to date with technological developments and new platforms to ensure their strategy evolves with the market. Regular reviews are essential to avoid rights holders playing constant catch-up with bad actors.
For more detail on online brand enforcement, watch the full webinar.