IP Basics: Online brand infringement

Welcome to the latest episode of Gowling WLG's Global Intellectual Property Podcast where we discuss a range of topics to help you protect your brands creations and inventions.

Zoe Pearman: Welcome to this podcast on online brand infringement. I am Zoe Pearman, a senior associate in the Intellectual Property and Advertising team at Gowling WLG, based in London.

So, in this podcast I am going to cover the basics of dealing with brand infringement online. We are seeing more and more infringements taking place online and with the increasing conversations around the metaverse that is only going to grow.

I am not going to look at the law in any real detail but I will provide you with some hints and tips as to what you can do if your rights are being infringed on the internet.

So, at its core, online infringement can take many forms, such as the sale of counterfeit or infringing products via the internet, and this can include NFTs; copying entire websites; maybe registering a domain name, which incorporates a brand name; or even creating social media profiles where you are masquerading as the brand owner.

Our first tip is to make sure that you are aware of the online landscape and to understand what infringements exist and the scale of those infringements. Without this knowledge it is impossible to effectively enforce your rights and manage the risk.

So, I guess the first question from that is, how do I become aware? This is something that you could do for 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, and then these sweeps should be tailored on the basis of your products, your rights and where you are seeing issues. We appreciate that the results may feel overwhelming at first but there are several possible solutions that can be effective and relatively low cost.

So, the next question is, what do you do with what you find? So, firstly, we will look at counterfeit products. Infringing products or counterfeits are often advertised and sold on legitimate platforms such as EBay, Amazon or Alibaba. They are also increasing sold on social media platforms, so you will see lots of them on Facebook Marketplace or TikTok. This so called 'dupe' culture is seemingly taking over on social media at the moment. However, it is worth bearing in mind that many of these platforms have policies governing and counterfeiting and intellectual property infringements.

When an infringing product is spotted on one of these online marketplaces or social media, it can actually 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.

As a general rule, this works well for cases of straightforward infringement, so particularly where you hold a registered IP right. For unregistered IP rights, such as copyright, it can be a little bit trickier as you need to prove what copyright exists rather than just being able to wave your certificate at the platform. Then in terms of next steps, the platform will review, investigate and if they agree, they will take down the listing.

Where it is a clear infringement, the platforms can take down the listings relatively quickly but in more complex cases, the platform may be reluctant to de-list products without a court order, so they may be willing to provide you with registered contact details for the seller so that you could take up the matter directly. We do have lots of experience of tackling takedowns and the general frustration in our experience is that it can feel a bit like Whack a Mole, so you have one listing taken down and then another will shortly appear in its place. Our advice for that is it is worth having a strategy in place so you know where your limits are and please do get in touch if you would like to discuss.

Another thing that it is really important to bear in mind with takedowns is that there was a High Court decision from the summer of last year, which found that submitting an online takedown may amount to a threat against both the online marketplace itself and against the seller. Very briefly, the law around threats is intended to provide protection against a party being threatened with legal action where there has not actually been any infringement.

So, if you submit a takedown request there is now a risk that the seller may bring a claim for unjustified threats. In our view, a party is relatively unlikely to bring a claim in real unjustified threats unless it also intended to bring another claim, so in effect the threats action is just kind of tagged on. The aggrieved party is much more likely to simply relist their products, however it remains a risk and is something that should be considered and discussed prior to takedown.

There are some other strategies that you may wish to explore in relation to counterfeit products and these take place offline as well as online. For example, you could file a customs notice with the applicable authority. The aim here is to provide border force with sufficient knowledge that they more effectively stop counterfeit products entering the country for onwards sale. And here, the more information that you provide them with, the more effective this can be. So, information such as any known counterfeit sellers or any known locations of sellers, any tells that may help them identify an infringing product, things like that will all help.

Another option which can be very effective is a payment method block. Where goods are being sold through a website, it is possible to ask the payment processor such as PayPal or Visa to stop processing payments from sites which offer counterfeit goods. In doing so, you are stopping money getting to the seller. They may be able to get round it by moving money to a different payment processor or asking for payment by bank transfer, but you are just making things difficult for them and that is one of our top tips – is to make yourself an unattractive brand to copy.

Away from counterfeit products, what if a third party is just using your trademark online? You often hear people say that all publicity is good publicity, but what can you do if someone is using your trademarks or brand in their online advertising and you want it to stop. If you have a registered trademark, then using that trademark in online advertising, including on social media without your consent would constitute trademark infringement and that can be pursued in the normal manner.

However, it is worth noting that where your trademark is used as part of a comparative advertising campaign, this may be a defence to trademark infringement, but this is a really complex area of law and we would recommend you seek specialist legal advice if this arises.

In addition to trademark infringement, you may also have rights in passing off if you can show goodwill, misrepresentation and damage, noting that you do not need a registered trademark in order to rely on passing off. And then when the use is on social media, then similarly with the counterfeit products that we discussed earlier, the platforms have policies governing intellectual property infringements and it can be relatively straightforward to submit an online takedown form.

Other options? You may also consider pursuing a complaint for the breach of the UK Advertising Codes. That would be the UK Code of Non-Broadcast Advertising and Direct and Promotional Marketing also known as the CAP code.

Another big problem we are seeing is where websites are making use of the trademarks in the domain name itself. Domain names attract customers and give credibility to the websites and emails which use them. For example, consumers may believe that the slightly discounted handbags for sale at GucciOutletStore.com are genuine products being sold by Gucci, when in fact they could be counterfeit products sold by anyone.

Or what if you received an email from Chairman@GowlingWLG.com but the L is replaced with a 1. You are unlikely to notice the domain name is spelt using the digit number one instead of the letter L and you will probably have no reason to question whether the email had actually come from Gowling WLG. It is common for domain names like this to be used to commit fraud, so called 'fake president fraud', and you do not want domain names like this being left in the hands of crooks, so you need to be able to take action to have them transferred to you.

When simply asking for a transfer does not work, we can force transfers through the making of domain name complaints. When you register a domain name, the person registering the domain name agrees a contract with the registrar. They are unlikely the read the fine print but those contracts contain a number of mandatory terms. For example, the person registering the domain name will agree that they are not registering or using it in a way which infringes anyone else's IP rights. They will also agree that there if there is a dispute concerning the domain name it will be dealt with under a standard dispute resolution policy. However as a first step, we recommend writing to the domain name holder if you can identify them, or the registrar and seeing if there is any traction there. If not, then you will need to submit a complaint to the appropriate body.

The dispute resolution policy differs depending on the top level domain, and the most common is the unified domain name dispute resolution policy commonly known as the UDRP. That applies to several major top level domain names including .com, .net and .org, but it also applies to a newer breed of top level domain name such as .fishing, .healthcare or .lawyer.

In the UK, Nominet is the registry for UK domain names so .co.uk, .org.uk, .uk, and also domains such as .BBC, .Wales and .London, and Nominet is the one that is responsible for the dispute resolution policy governing those domain names.

Whilst the policies differ slightly, the basic premise allows a brand owner to make a complaint to an independent person and if the complaint is upheld it is transferred to the brand owner. There are slight differences in policy i.e. between Nominet and the UDRP but if the domain name is the same or confusing similar as a trademark of a brand owner and the domain name has been registered and used in bad faith or unfairly, you are likely to succeed.

SO, the points that I have mentioned are all handy tools and act as a good immediate or short-term resolution to the problems that are immediately on your desk, but to really tackle online problems it is our view that consistency is key.

I just wanted to give you a couple of tips and some food for thought. As I mentioned earlier, you need to be aware of what infringements are out there, and we would recommend a clear and consistent online enforcement strategy, which considers online brand infringement and counterfeiting from a number of angles. But, by its nature, this should be tailored to your priorities, budgets, products, rights etc. And then you should also consider whether you want to be proactive. You can undertake searches of different platforms using specific terms, rather than just reacting to counterfeit products as and when you are notified of them.

This will help make like difficult for the infringer and as we mentioned earlier you want to make yourself an unattractive target. There will always be easier brands to emulate or infringe.

I hope you found this brief overview of the common solutions useful. If you would like to know more about any of this, please do get in touch.

Thanks for joining Gowling WLG for this podcast. If you enjoyed this episode, be sure to check out our website at gowlingwlg.com for more useful insights and resources and do not forget to subscribe to ensure you join us for our next episode.