For every successful brand, it is critical to properly protect and to productively develop and use the underlying intellectual property (IP) in that brand to ensure its long-term growth.
Trademark and registered design portfolio
It goes without saying: maintaining a comprehensive trademark portfolio is key. It is important for brand owners to register its core trademarks (both in relation to the overall brand names and in relation to any individual products which are produced by the brand owner) in all countries where both its branded products and services are sold as well as in those countries where counterfeits appear. Here, it is critical to think about the different categories of goods and/or services in relation to which the brand is used, whether it is used simply in word format or is it used in a stylized format or in a particular font or in combination with a logo or a slogan, what colors are associated with the brand and are any product shapers, sounds or smells worthy as protection,
Also, in all of this, don’t forget considering registered design protection which can also be used to protect the visual appearance of those products which have some eye appeal.
Those brand owners who invest in building up and maintaining a portfolio of registered trademarks and designs will then find it far easier to fighting any counterfeiters than would be the case than if just relying on copyright and/or trade dress and, in so doing, such remedies will be less costly and more effective. This is because the registered trade mark and/or registered design has conferred on it the exclusive right to use that trade mark or design to make, use, promote, sell, import and export any goods which are covered by the scope of the registered protection without having to prove copying or damage to reputation and so on.
With all of this in mind, we strongly recommend that all brand owners need to assess and review their portfolio of registered trademarks and designs on a regular basis so that the registered protection keeps up with any changes which are made to the ways in which brands and their products evolve. In particular, it is important to watch the counties in which the products of the brand owner are being sold, whether directly by the brand owner or whether via the viral popularity of certain goods following on from social-media trends. In particular, if a product goes viral on any social media platform, it is very likely that counterfeiters will target it.
In all of this, brand owners should be aware that, counterfeiters are very “creative” and adaptable. For instance, in some of the most recent cases involving the sale of fake cosmetics, we saw the trend that counterfeiters often change out the core trademarks of the overall brand on the products while keeping the product name and shape of the cosmetic bottle. It is thus beneficial to not only register the core trademarks of the brand, but also the so called secondary trademarks that represent the name of the individual product alongside other distinctive features of a product such as its shape, smell or sound.
Custom applications and trainings
Fighting counterfeiters on a global basis will require strong relations with customs offices worldwide. For example, if a brand owner keeps customs officials aware of the anticipated arrivals of containers of its goods, this may help customs officials spot other shipments which may be counterfeit so that they can be seized either before they are even shipped out the country of origin or on arrival in the country in which they are intended for sale. Alongside this, brand owners will be more successful if they work pro-actively with customs officials through the customs applications process so that they make customs officials aware of (and provide training where appropriate) in relation to new product developments and launches, any differences in the products intended for sale in particular countries, any information on known infringers and so on. All of this will be an important part of managing an effective and pro-active global anti-counterfeiting program. In so doing, anything that increases the awareness of a brand owners products to customs officials will make their job easier and, as a result, will help to motivate them to pick up on the activities of those who are counterfeiting the products of the brand owner.
Data and case management
An efficient collection and recordal tool for information obtained from the anti-counterfeiting cases is also essential. Such a tool allows a brand owner to combine cases, track sources and obtain higher fines and punishments for repeat infringers.
It is equally important to combine information retrieved online with Offline Enforcement. Test purchases from online shops provide valuable information, for instance shipping details, bank details, email addresses or phone numbers.
By following the strategies outlined above, a brand owner will become more successful in its fight against counterfeiters. In all of this, our global counterfeiting team is well-prepared to assist brand owners in the development of its IP portfolio as well as monitoring, investigations and enforcement actions all around the world. For more information, contact Rebecca Dücker, Jens Petry or Paolo Beconcini.