Due to consumer habits moving away from the traditional brick-and-mortar outlets towards online shopping (a shift that was only accelerated by the COVID-19 pandemic) and the increasing discussions around the metaverse, it is clear that the online landscape is increasingly important.
It is also clear that brand owners are facing a number of challenges online – for example, third parties registering infringing domain names or creating social media accounts to masquerade as the brand owner online, or selling counterfeit goods on online marketplaces.
The purpose of this guide is to highlight some of the strategies that brand owners in the UK may use to protect and enforce their rights in an increasingly online world. The guide below doesn't consider protection in the metaverse – but please see our insights on securing trademark protection in the metaverse for more information on this.
As a first and most important point, it is crucially important for brand owners to be aware of the online landscape and to understand what infringements exist, as well as the scale of such infringements. Without that knowledge, it is impossible for brand owners to enforce their rights or prevent/manage the risk.
Becoming aware
This is something you could do yourself, or you could speak to us and we would be happy to assist. It involves undertaking proactive searches or 'sweeps' of the relevant platforms searching for your key brands and/or product names. The sweeps should be tailored on the basis of your products, your rights, and where you're seeing issues.
We appreciate the results may feel overwhelming at first, but there are several possible solutions that can be effective and relatively low cost.
The problems (and immediate / short-term resolution)
Counterfeit products
Arguably the most obvious online problem faced by brand owners is counterfeits and 'dupe' products. It is increasingly common for counterfeiters to try and sell counterfeit goods on online marketplaces and the so-called "dupe culture" is seemingly taking over, especially on social media. However, it is worth bearing in mind that these platforms have policies governing anti-counterfeiting and intellectual property infringements.
When an infringing product (or a 'dupe') is spotted on an online marketplace or social media, it can be relatively straightforward to request a takedown. Whilst each platform has its own takedown procedure that needs to be followed, it typically involves an online form, which requires the brand owner to submit details of its rights, and the allegedly infringing listings. The relevant platform will then review, investigate and take down the listing if appropriate. Where it is a clear infringement, the platforms can take down the listings relatively quickly.
Some platforms require you to register an account before submitting a takedown. When looking to submit an online takedown request, it is important to consider what rights the brand owner is able to rely on:
- You may think that for counterfeit products the platforms are more concerned with patent or design rights, however, where a third party is using your registered trademark in the listing title, it is often effective to rely on trademark rights for the takedown.
- In our experience, it can be more difficult to rely on unregistered rights as opposed to registered rights (although not impossible and we have had successful experiences). For example, it can be difficult to explain whether copyright subsists and to specify the rights in sufficient detail for the marketplace to investigate and take action.
However, where there is a large-scale problem on online marketplaces or social media, it can be time consuming to submit takedowns against a number of listings (particularly where the counterfeit products are sold across a number of platforms). It can also feel like "whack-a-mole" where once you have successfully had one listing taken down, another appears in its place! It is worth, therefore, having a strategy in place (including covering what you're going to do if you receive pushback from the platform or the underlying seller). Our team has significant experience of advising clients on these strategies and making sure they are cost-effective and work well.
Unjustified threats
It is also important to note the impact of a High Court judgment, Shenzhen Carku Technology Co. Ltd ("Carku") v The NOCO Company ("Noco").
The High Court decided that an online takedown request by Noco against Carku's products (submitted on the grounds that they were infringing patents) may amount to a threat against the online marketplace platform and the seller (Carku) within the meaning of the Patents Act 1977.
The law around threats is intended to provide protection against a party being threatened with legal action when there has not actually been any infringement. The threats provisions across all intellectual property (IP) rights are very similar:
Whilst the judge in this case stressed that this finding was based on the specific facts, it is clear that the threats provisions should be considered when forming de-listing/takedown strategies and before submitting an online takedown request.
In our view, a party is relatively unlikely to bring a claim for unjustified threats unless it intended to bring a claim for a declaration of non-infringement and/or patent revocation and/or invalidity and so in effect the threats claim is tagged on. The aggrieved party is more likely to re-list their products. However, it remains a risk.
There are various strategies we suggest to reduce the risk of a threats action. Please contact one of the team if you would like to discuss these. It is important to remember that there is no risk-free approach and it is crucial for brand owners to seek legal advice prior to submitting takedowns.
Other strategies
There are other strategies you may wish to explore in relation to counterfeit products (offline as well as online – including seeking border force intervention by filing a customs notice with the applicable authority and/or preventing the counterfeiter receiving payment). These are discussed in detail in our Anti-Counterfeiting Country Guides.
Use of your trademarks online
There is the old adage "all publicity is good publicity", but what can you do if someone is using your trademarks (or brand) online and you want it to stop?
If you have a registered trademark then in some circumstances this would constitute trademark infringement under the Trade Marks Act 1994 (the "Act"). This will often hinge on whether the third party's use of the mark constitutes "use" under the Act: for example, use in advertising constitutes "use", however, if there is use on social media the brand owner will need to consider if this is an advert and constitutes "use" or if it is a personal (i.e. non-commercial post). Such use may also constitute passing off if the brand owner can show goodwill, misrepresentation and damage (noting you don't need a registered trademark to rely on passing off, if you want to hear more about passing off, listen to our podcast.
Along with any rights to take action for trademark infringement and/or passing off, a brand owner may have the option of pursuing a complaint for breach of the UK advertising codes - the UK Code of Non-broadcast Advertising and Direct & Promotional Marketing (CAP Code). We have set out some practical points to consider when your brand is being used in advertising, particularly in the rise of social media, in this article.
If you become aware of such use you could send a cease and desist letter to the infringing third party. If the use is on a platform (e.g. social media), then as we mentioned earlier (in relation to counterfeit products) these platforms have policies governing intellectual property infringements and it can be relatively straightforward to submit an online takedown form. Typically it involves an online form which requires the brand owner to submit details of its rights, and the allegedly infringing content. The relevant platform will then review and investigate the content and takedown if appropriate.
Similarly, if you believe content in a search result on a search engine infringes your rights then there is likely an online form, which asks you to provide details. In addition to submitting the online form, if a third party is using your brand as ad words and/or meta tags, you may also wish to send a cease and desist letter to the third party. Assuming the advert is not sufficiently clear such that there is a real risk of confusion on the part of the average consumer as the origin of the advert and the goods/services, it may constitute trademark infringement.
Infringing websites
There are two options in cases where a website has infringing or illegal content, or a domain name is otherwise being used in an obviously bad way, such as in email addresses used to imitate senior staff (typically to cause junior staff to transfer money – so-called 'fake president fraud'):
- the domain name registrar may be persuaded to suspend or delete the account; and/or
- the website host may be persuaded to stop hosting the website (i.e. take it down).
Website takedown complaints can be effective, straightforward to prepare and can succeed quickly. However, they cannot be used on every occasion. It is also worth noting that if a website stops hosting a website / content, the website operator can just move the website to a new host (who again, you can ask to take it down), but ultimately they could end up using a host who is not responsive to take down complaints.
Where there is no evidence of the domain name / website being used in an obviously illegal or infringing manner (beyond the domain name itself being registered in bad faith), a takedown request may not be appropriate (and is less likely to be actioned), although there may be other options such as making a domain name complaint.
For the purposes of this guide, we are focusing on UK domain names / UK domain name complaints. Nominet is the registry for UK domain names – e.g. co.uk, .org.uk, .uk and also domains such as .bbc, .wales and .london - and is also responsible for the dispute resolution policy.
However, in the first instance, we recommend writing to the domain name holder and/or the registrar for the offending domain name. Post-GDPR it is often difficult to identify who owns a domain name, as the online registries now redact such information for privacy. You will often need to submit a "Data Release Form" to identify the entity involved. If the registrar is reluctant to disclose such information without a court order, some other options to identify the owner involve:
- hiring an investigator;
- if they are selling products, undertaking a trap purchase and seeing if there is a return address; and/or
- applying to court.
If you do not receive any traction with the domain name holder or the registrar, the brand owner will need to submit a complaint to Nominet, which is filed by way of an online tool. The brand owner will need to show:
- it has rights in respect of a name or mark which is identical or similar to the domain name;
- the domain name in the hands of the respondent is an "abusive registration." An "abusive registration" is one that (a) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant's rights; or (b) is being or has been used in a manner which has taken unfair advantage of or has been unfairly detrimental to the complainant's rights. The Nominet policy provides a non-exhaustive list of what may be considered an "abusive registration."
The complaint will be sent to the respondent who is given a relatively short window to respond (and again the Nominet policy provides a non-exhaustive list of what would not count as an "abusive registration" – such as domains registered for the purpose of criticism).
Where a response is submitted, Nominet offer a free, voluntary mediation service. If no response is received or the case cannot be settled by mediation, the brand owner has the option of paying a fee to appoint an expert to make a binding decision – which can result in transferring the domain name.
Longer-term preventative strategies
Whilst the above methods will provide a short-term resolution to the immediate problem, it is our view that to really tackle online problems: consistency is key.
- As we mentioned at the outset of this article, you need to be aware of what infringements and counterfeits are out there. You can then assess the amount of harm being inflicted on the brand owner. The overall goal is clearly to move as efficiently and cost effectively as you possibly can.
- We recommend developing a clear and consistent online enforcement strategy, which considers online brand infringement and anti-counterfeiting from a number of angles. An exhaustive program can be expensive, but it does not need to be and should be tailored to each possible business. The most appropriate strategy will differ depending on your priorities, products, budgets, rights, etc. It is worth considering these and discussing your options with experts.
- As part of your online enforcement strategy, you should strongly consider whether to be proactive (i.e. undertake proactive searches of the relevant platforms). If so, it is beneficial to consider what infringements / counterfeits you are seeing and where you are seeing them. You can then formulate a list of search terms and platforms you wish to search.
- We often advise brand owners that they should seek to make themselves an unattractive target – this will involve taking advantage of options available to you as a brand owner and ensuring you stay vigilant and proactive (it is beneficial to continue to monitor the situation and take consistent action). This way you will become an unattractive target – there will be easier brands to emulate and/or infringe.
- You may wish to consider educating consumers. If consumers know more about your brand and products and become more engaged, this can reduce counterfeiting and infringement. However, if your consumers become more knowledgeable, so will the counterfeiters.
For global tips on how to defend your brand online, please view our global webinar with panellists from a number of our international offices.