IP don’t like Cyber Mondays

Experts discuss what brands can do to protect their trademarks online during the Cyber Monday sales, with fakes widely available

Nathalie Dreyfus
Trademark attorney and expert before WIPO Arbitration and
Mediation Center

Charlie Abrahams
Senior vice president, worldwide sales

Fiona Gao
General manager, brand protection Asia
Pointer Brand Protection & Research

David Buirs
Brand protection team leader
Pointer Brand Protection & Research

With Cyber Monday fast approaching, what are brands doing to protect online consumers from counterfeit goods? What more should they be doing?

Nathalie Dreyfus: With Cyber Monday (28 November) fast approaching, companies need to establish their own defence strategy against counterfeit goods.

As each brand is different depending on their trademarks and types of goods and services, there is no uniform policy in place to protect companies against this type of infringement. Indeed, consumer goods retailers are more likely to be subject to counterfeiting and need to be more vigilant than other organisations that are less exposed to this risk.

Brand owners need to be aware of the infringement potential of counterfeit goods and to enforce their trademark rights on the internet.

Companies can implement monitoring services to detect any usurpation of their rights. In case of infringement, companies should initiate dispute resolution procedures in order to remove any content that may compromise their commercial interests.

Brands should also establish watch services for domain names and social networks in order to obtain the transfer or cancellation of a litigious domain name or social media account.

Charlie Abrahams: A key part of keeping customers safe from counterfeiters is education. They can be an important ally in the fight against counterfeiters, so more and more brands are advising consumers on the risk of buying from unauthorised sources and encouraging them to report suspicious goods and sellers.

Of course, this forms part of a wider online brand protection strategy. This includes monitoring all online avenues, from online marketplaces and ecommerce sites, to social media, and keeping an eye on online promotional channels.

Counterfeiters rely on these channels to drive traffic to their sites, much the same as legitimate brands do and can drive up keyword prices (cost per click) and divert legitimate traffic using PPC ads.

Fiona Gao: When looking at the internet, we believe that online marketplaces (compared to social media and webshops) pose the biggest threat to our client’s brands. Online marketplaces are becoming more and more popular. According to a recent study, the 10 biggest online marketplaces in the US sold goods worth more than $100 billion last year.

With Cyber Monday approaching, we have been targeting the biggest counterfeit sellers on the biggest platforms such as Amazon and eBay for weeks leading up to the event. We prioritise counterfeiters by the number of fake listings, by the number of sales, but also by the products they are selling.

Counterfeiters that sell popular new products that Thanksgiving shoppers might be looking for are a high priority for us. Our goal is to shut down the seller completely, including the account and other sales channels, such as social media profiles or webshops.

Besides Amazon and eBay, we’re also targeting smaller platforms such as iOffer. The platform is focused on the US market, and has a high percentage of counterfeits compared to other US platforms.

As with the other platforms, we are taking out seller stores here. During the weeks before Cyber Monday, we are also dedicating extra enforcement efforts to shutting down many counterfeit webshops on the .com or .us domains, which might appeal to US consumers, and to blocking social media accounts on Facebook, YouTube, Instagram and so on.

What about enforcement agencies?

Abrahams: Working with brand protection firms, ISPs, domain registrars and search engines is a critical part of any brand protection strategy.

These agencies are involved in taking down illegal sites, enforcing cease and desist notices, as well as removing listings.

Dreyfus: Retailers involved in Cyber Monday are usually smaller companies that on other days are less likely to be able to compete with larger and well-known vendors.

Smaller retailers offering large discounts on a vast range of products increases the likelihood of counterfeit goods being made available on the internet.

It is therefore interesting to take into consideration not only the role and responsibility of companies and brand owners themselves, but also the role of enforcement agencies and the actions that can be taken to curtail the sale of counterfeit goods in light of Cyber Monday.

Initiatives such as the US ‘Operation in Our Sites’, launched in 2010 by the National Intellectual Property Rights Coordination Center, saw 706 domain names seized in 2014. Some 297 of the 706 domain names were in fact seized as part of ‘Project Cyber Monday IV’.

In Europe, ‘Project Transatlantic III’, a joint initiative between Europol and the US Immigration and Customs Enforcement Agency (ICE), saw a further 393 foreign domain names seized.

Enforcement agencies need to enhance cooperation and ensure that international efforts like the above are strengthened.

The number of websites selling counterfeit goods, especially around the holiday season, is ever increasing and cooperation between countries is fundamental to protecting company brands worldwide.

How should brands approach new marketplaces such as Facebook’s, where counterfeits are an inevitability?

Abrahams: Social media advertising and marketplaces are increasingly being used by counterfeiters and should be included in any online brand protection plan.

Increasingly, brands are seeing the value in registering their names across social media sites, even those that they don’t have an active presence on. This prevents opportunities for brandjacking.

In addition, social media should be included in a brand protection strategy, but brand protection should form part of an organisation’s social media policy, too.

A social media policy helps define the rules and guidelines for employees, external partners, affiliates and distributors.

Dreyfus: New marketplaces require greater vigilance as they are larger and traceability of the product in question is less clear than on classic marketplaces. Brands need to identify the major players on these particular marketplaces, and understand the role they play in every step of the commercialisation of products. Companies will then be able to take action if they detect any counterfeits.

Brand managers should also remove any reference to non-authorised sellers, as consumers will then be aware that these are not official sellers of the brand.

On Amazon, for example, companies should sell their products directly to the website, considered as a supplier, and avoid any sale via an intermediary.

Most of the time, counterfeit goods are dangerous to consumers (medicine or automotive parts, for example). It is therefore essential that brands ensure that processes are in place to fight counterfeits.

David Buirs: Information and prioritisation are important. You have to know where the counterfeit sales take place. It’s highly recommended to join different online groups in which people trade goods, to uncover networks and profiles that might not be public.

Counterfeiters often start groups or communities that are private, in which they do their illegal sales. After you know who and where the bad guys are, you can start blocking the accounts, starting with the biggest threats.

It’s important to not only take out their social media account, but all other sales channels that they use. If they lose not only their Facebook account, their eBay account, but also their YouTube channel, their Instagram account, their Yupoo profile, and their webshop, you are really frustrating their efforts.

Besides online enforcement, it’s also advisable to target a few big counterfeiters and work together with local law enforcement in raids or potential criminal charges.

What key piece of advice would you give brands as Christmas rapidly approaches?

Dreyfus: In addition to ensuring companies register their trademarks, companies can implement or enhance the technology used within their organisations in order to protect their brand.

During the holiday season, companies may find that implementing higher levels of brand surveillance is particularly beneficial.

By implementing watch services for your brand, both monitoring and enforcement action is made simpler. Our firm provides watch services that can be set up to monitor trademarks.

Several different watch services are available to companies, covering domain name, social media, Google AdWords, mobile apps, and even non-Latin character domain names.

In addition to monitoring trademarks, brand owners can also provide consumers with useful information such as a list of authorised resellers or partner websites.

Buirs: Use a good online brand protection provider, know where the most damaging infringements take place, and start taking out the sellers, including all of their sales channels. And of course, don’t forget to buy your Christmas presents on time.

Abrahams: Remember that as Christmas approaches online shopping will increase and more people will be searching online for ideas, gifts and bargains. As a result, this is the time of year for brands to be more vigilant and do more to educate consumers on the dangers of buying counterfeit products.
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