Step 1 - IP protection and monitoring
For innovative and branded businesses, an IP strategy is essential. Defining and taking steps to establish protection for your main intangible assets is a necessary first step.
Inventions, brands and designs can benefit from registration - generally speaking, it is easier to enforce registered rights. However, unregistered rights such as copyright and design right can also be powerful weapons, along with unregistered trade marks and packaging, protected through the law of passing off. All of these rights are useful tools in a business’s armoury. Regular review of your IP portfolios will help to ensure that key IP rights are protected and that you are no longer maintaining rights that you don’t need.
IP owners will need a system to monitor the internet regularly for infringements. This will often involve identification of the platforms and sites most relevant to your business. Infringement left unchecked can lead to dilution of your brand and unnecessary destruction of brand value, as well as a potential loss of opportunity for future brand development.
Monitoring can be done in-house or with the help of commercial partners willing to act as your “eyes and ears”. Where large scale infringement is an issue, businesses may wish to engage the services of third party brand protection companies (eg Red Points or CSC) which make use of anti-counterfeiting technology to identify fakes.
Step 2 - Investigation
Where websites offer the facility to pay for goods by credit, making test purchases by that method can be a useful way of tracing where the money is going. Social media platforms or Facebook About can also be a valuable source of information about those trading from a website.
To persuade third parties or a court to act against an infringer, you will need to capture evidence of the infringing activity. You may be able to do this yourself by taking screenshots, making a test purchase or enlisting the help of external companies to collate evidence for you.
Step 3 - Reporting
Depending on the nature and scale of activity, there are a number of options for reporting infringing activity.
Registrar and host
Details of the domain name registrar and the address for reporting abuse can be found through a WHOIS search. Online tools are available to check who is hosting the website. Reporting systems vary, as does the willingness of registrars and hosts to get involved. Hosts may be willing to take down websites that infringe IP rights, although this might not prove a permanent solution as infringers may simply jump to a new host.
Platform providers’ notice and takedown
Once a platform provider is put on notice of illegal activity or information, it must remove illegal content or risk incurring liability. Each has their own system for reporting IP infringement. For example, Amazon has its Brand Registry Tool, ebay operates its Verified Rights Owners (VeRO) programme and Alibaba has it Intellectual Property Group Platform (IPP).
Where it is possible to pay for goods with credit, providers such as American Express, Mastercard and Paypal have their own anti-piracy reporting procedures which can be used to disrupt payments to such websites.
Action Fraud is the UK’s National Fraud and Cyber Crime Reporting Centre. You can submit a report online and expect a response within 28 days. Note, however, that there are budget constraints and so not all complaints will be investigated.
UK Trading Standards operate at a local and a national level. Again, there are budget constraints but safety-related issues are prioritised. These often arise where sub-standard products (which also infringe IP rights) are being sold.
Police Intellectual Property Crime Unit (PIPCU)
PIPCU investigates, disrupts and prevents serious and organised intellectual property crime which causes significant harm or damage to the UK economy. It focuses on IP crime in relation to physical goods with an online nexus and digital content.
You can apply for protection against infringement of intellectual property rights on imports into and exports out of the UK. There have been some changes to the procedure following Brexit and detailed information is available on www.gov.uk.
As an IP owner, you can help protect your rights by making an Application for Action. This requests Border Force to detain goods suspect of infringing IP rights.
Step 4 - Escalation
If escalation is necessary, and you have an enforceable right in the UK, you can commence court proceedings. Before doing so, it is normal practice to send a letter of claim. This will typically include details of the IP owner’s rights, the nature of the infringing activity and a demand for undertakings to stop the activity. The undertakings will mirror the remedies you would be entitled to if you brought a claim and were successful.
If litigation is necessary, factors such as scale, nature, complexity and budget will influence your choice of forum. Remedies can include an injunction, destruction/delivery up or destruction of infringing items, damages, costs and publicity orders.
In circumstances where you are unable to identify the infringer, it is possible to commence proceedings against “persons unknown” and apply for an order that the defendant discloses his identity. If an email address is given on the website, for instance, you can apply for permission to serve those proceedings via that address. If you obtain an order in your favour, and the defendant fails to comply with it, you can use the order to persuade third parties (such as Nominet) to help to enforce its terms.
Finally, jurisdiction issues
The international reach of the internet presents another set of problems. You will need to check where the website is based as this will impact your enforcement options. For a website based in China or the US, for instance, it may be the best course to commence proceedings there.
Enforcement in other parts of Europe is currently also an issue. For claims issued in England and Wales after 1 January 2021, it is currently more difficult to enforce an English judgment in the EU than it was pre-Brexit. We are hopeful that the UK’s application to join the Lugano Convention will eventually be successful, helping to alleviate some of these problems for the future.