We heard from Victor Foo, IP Counsel at Joseph Joseph at our Talking IP session on 4 February 2021 about how online sales particularly of kitchenware have surged during the pandemic. Many of us are spending more time at home and turning our hands to cooking and baking, and we’re buying the utensils to help us. The fraudsters have also been busy during the pandemic – targeting people who are shopping online and working or studying remotely. We discussed the armoury of measures available to IP owners to fight the fakes.
Steps to protection
From conception of ideas through to the sale of a product or service, measures can be put in place to protect your rights. From the outset, confidentiality agreements and practices can protect you through the prototype and development stages. Registration of rights like inventions, designs and brands, and maintenance of your IP portfolio, is key. To watch for infringing activity, you’ll need systems for regular monitoring of the marketplace. This often involves identification of the platforms and sites most relevant to your business. Infringement left unchecked can lead to dilution of your brand and needless destruction of brand value, as well as a potential loss of opportunity for future brand development.
There are proactive steps IP owners can take to protect themselves, for example, by using the Amazon Brand Registry tool. Requiring registration, this offers access to a set of tools to help rights holders manage and protect their IP.
Identity and evidence
Online infringers often try to hide behind the anonymity of the internet. There are ways to identify evasive infringers. You could file a data release request with the relevant registry (Nominet for .co.uk domains), or make a request for disclosure of non-public registration information (NPRD) once less intrusive mechanisms have been exhausted. Infringers who work hard to hide their true identity are still not out of reach for IP owners. At our Talking IP session, we discussed how court orders can be sought against “persons unknown” and those orders used to persuade domain name authorities to help enforce such orders.
Collating evidence of infringement is also important - things can change so quickly on the internet. You can do this yourself by taking screenshots of infringing items, making a trap purchase or enlisting the help of external services (like Red Points) to collate evidence for you.
Does notice and takedown work?
Many online platforms offer notice and takedown services to support IP owners in tackling infringements. Our Talking IP poll revealed that fewer than expected (42%) use these to combat infringements on the internet and only 5% found them very effective. In our experience, some are deterred because they find these systems ineffective. Others fear being on the receiving end of an action for groundless threats of infringement proceedings. What is clear is the UK Government’s commitment to the notice and takedown regime post Brexit. We can also expect the UK to maintain liability protections for intermediaries where they fulfil the conditions for those immunity shields to apply. But is the notice and takedown regime effective as it is, or does more need to be done to protect IP owners? Leaving the EU may offer an opportunity for the UK to strengthen this system.
In Europe, the difficult balance between the interests of IP owners and online freedoms appears to be swinging in favour of IP owners. This is particularly noticeable in the copyright scene, with the EU Copyright Directive soon to require operators to obtain authorisation from copyright holders for works uploaded by users. It is likely that we will see divergence in this area of law between the UK and the EU.
Our Talking IP poll on online platforms indicated that they need to do much more to protect the interests of IP owners. This was seen as particularly important once illegal activity or information is brought to their attention. Prevention is always better than cure so perhaps the answer lies in bolstered protection at the start of the sales process. Better engagement and communication between IP owners and platforms in terms of brand knowledge and education could have a major impact. Early identification of issues would help here. We anticipate substantial improvements through harnessing the power of artificial intelligence for cost and time efficiency, as well as its ability to handle the scale that the internet generates.
If you missed our Talking IP session on online enforcement, or any of our previous sessions, you can catch up here.
Learn more about how we can help you with the protection and management of your intellectual property, and our IP enforcement services.