Michelle Cooke
Manatt, Phelps & Philips

Michelle Cooke of Manatt, Phelps & Philips discusses the art of trademark enforcement

How best can brands stop trademark infringement?

One of the best ways to stop infringers is by finding the location where they are manufacturing the products, or being able to identify, for example, a ship transporting the infringing products. Taking action against a manufacturer or goods in transit can take a bit of time and effort because you might need to involve the police or other law enforcement, and that requires giving them significant and detailed information.

How aware are technology companies of trademark infringement during?

Tech companies definitely should be focusing on trademark infringement especially during peak selling periods—infringing or counterfeit products can hit the market with very quick speed. However, their sensitivity to trademark infringement probably is affected by who is their target customer—sophisticated companies or individual consumers.

All business with trademarks (which is just about all of them) are forced to prioritise in trademark enforcement. This is because of the volume of infringement/counterfeit products and the expansive means by which they can get into the hands of consumers. This is fueled, of course, by the internet. Brand owners really need to have a smart plan in place where they already have identified their priorities, when to take action, and what action to take, as well when it simply isn’t worth the effort or resources to pursue.

I think tech companies tend to be very focused on patents and copyright, the technology of their products and services. But as far as individual consumers are concerned, they don’t really care or even know what patents are inside the product.

Instead, consumers focus on the brand that’s on the box or product, as it conveys instantaneously the quality and innovativeness within the box or product. As a result, brand owners in the tech space should re-evaluate the degree to which they focus on their trademarks and protection efforts.

Do tech owners turn a ‘blind eye’ to trademark infringement?

I wouldn’t call it a blind eye; it’s just that trademarks tend not to be as dominate on their radar as their technology. Quite frankly, it’s the technology where tech companies are likely to have made a significant investment. They want to find something new and innovative, and that development and obtaining patents takes time.

I think tech companies see taking action against counterfeit products as a priority. But does the tech industry take as an expansive view on trademark enforcement as say the fashion industry? Probably not.

So should they be just as concerned?

In an ideal word with limitless legal budgets, tech companies should be more concerned about their trademark enforcement. But one benefit that the tech industry may have over fashion is that the range of infringing products is likely to be narrower.

We are used to seeing fashion brands span multiple categories—from jeans, to bed linens, to furniture, to cars, to tech devices. This creates a very expansive field of infringement products and services. In contrast, consumers would be baffled to see the Apple brand on a box of cereal.

There is probably reduced inducement to make infringing use of a tech brand far afield from the tech space because it is less likely to trigger a purchase. It just wouldn’t make sense to the consumer.

How can tech companies crack down on trademark infringement?

You really have to have the legal groundwork already in place. For example, you have to have secured trademark registrations and you have to have educated customs in advance.

Additionally, the best resources are people on the ground who know what’s happening. Often, that’s going to be police or law enforcement.
It goes back to educating people about your brand so that they are better able to identify legitimate products. Additionally, consider adding unique labels, tags, sensors or codes that can further help weed out counterfeit and other unauthorised uses of trademarks.

The more information you give to law enforcement about your brand, the far better off you’ll be.

There have been a number of instances where brand owners have tried to crack down on the small infringer as a deterring message. But the cost and expense to keep that up on a large scale, in a way that will have a meaningful impact on the party responsible for producing the product in the thousands, if not the millions, may not be the best long-term investment.

Brand owners need to ramp up their own protection efforts (such as securing trademark registrations, actively monitoring the marketplace for infringing products, and adding security features to products), and give law enforcement the tools to shut down the vendors and distributors. Brand owners sometimes may be able to act quickly on infringers and counterfeiters such as obtaining injunctions, but it’s difficult to go after the guy with a van full of counterfeit goods.

Are there certain jurisdictions where trademark infringement is well known?

I don’t think it’s very difficult to find fakes, but when you factor in time, resources and efforts needed to police and enforce trademarks, it becomes quite stressful to prioritise where, as a brand owner, you’re going to focus your efforts.

Usually, finding out the location that’s manufacturing the infringing or counterfeit product generally leads to the most lasting results for a brand owner. Smart actions that disrupt the flow of major infringing/counterfeit productions are where companies want to put their efforts.

There is a certain level of, almost, acceptance that there is going to be some type of infringement. It’s just because of the scope of the problem.

The high quality of some counterfeits and infringing products, and the speed in which they can make their way into a consumer’s hands via the internet makes it very difficult for a brand owner to implement a no-tolerance position.

One of my recommendations to clients is to have an active trademark protection and enforcement programme.

Identify upfront where to put your money and efforts, and revaluate these goals as your business needs evolve.

It’s about what’s going to give you the most return for your enforcement efforts, and that includes laying the legal groundwork in advance.

If there’s no legal groundwork to establish and support a brand owner’s rights, it just doesn’t work.

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