Fighting counterfeits during a pandemic, monetising brands and picking external counsel – takeaways from the second week of WTR Connect

The inaugural WTR Connect virtual conference, bringing together the trademark community to share best practice with major industry figures, concluded yesterday. Some of the highlights and learnings from the second week of the event are collated below, including insight into the record-breaking filing levels in key Asia-Pacific jurisdictions, how Microsoft’s tech philosophy spurs the trademark department, why IP offices need to develop APIs, and strategies to bring down enforcement costs. 

Fighting the inevitable covid-19 counterfeit opportunists – Officially kicking off the second week of WTR Connect was a fireside chat with Christian Archambeau, executive director of the EUIPO. More coverage of that conversation is available here, but one aspect that was touched on was the rise of counterfeit personal protective equipment during the covid-19 pandemic and the office’s response. Archambeau reflected: “Covid-19 has shown in a dramatic way the importance of preventing fake medical products and personal protective equipment from entering the EU. The mobilisation of our stakeholders at this time and the contribution we are making to the global effort against covid-19-related IP crime is a positive example of how to respond. [For example,] we particularly noticed an increase online, so through the observatory, we have  been cooperating with the European Anti-Fraud Office and Europol in response to the distribution of counterfeit and substandard covid-19 products. We have also shared intelligence through the IP Enforcement Portal.” What the pandemic has highlighted is the true nature of illicit crime and Archambeau ended with the hope that the resulting increased awareness will create a greater willingness among member states to make IP crime a high priority. (TL)  

2020 is set to be a record breaker in the Asia-Pacific region – In a stats-packed keynote speech, Cameron Mitchell, senior director, IP group market strategy at Clarivate, focused on how the trademark ecosystem in Asia has grown over the past 10 years and during the pandemic. The long-term picture has been one of growth, in large part driven by China. Turning to 2020 and the impact of the pandemic, he noted that the early months of 2020, which were dominated by the pandemic, saw a dramatic fall in trademark filing in Australia, India and Japan. China saw a fall but this also coincided with national holidays, which traditionally have an impact too. By mid-April it had received 6% more applications than for the equivalent time in 2019. Elsewhere that quick recovery wasn’t the case – in mid-April Australia was down 8%, Japan 7% and India 10%. However, Mitchell observed: “As of early October there has been a remarkable recovery across the board, led by a surge in applications covering Classes 5, 10, 25 and 28. Registers around the world are on course for record years in 2020. Australia is now 10% ahead of 2019 in terms of filing activity, China is already 20% ahead of 2019, India is up 6% and is still growing, and Japan is the only one lower than 2019, 1%, but it has a couple of months to catch up.” As a result, 2020 is set to be a year of significant growth in the Asia-Pacific region. “The trademark scene is not just alive in Asia-Pacific, it is thriving in 2020,” Mitchell concluded. (TL) 

How to pick external counsel? – Finding the perfect fits for your external network is a non-negotiable part of effectively protecting brands internationally. Natasza Shilling, senior counsel, legal at Vodafone, noted that: “It’s not always ‘cheapest is best’.” “Having somebody pick up the phone” is an important factor for Cynthia Tregillis, vice president and deputy general counsel at Western Digital. It is through proper interaction that the business can communicate risk tolerances for IP matters and see whether counsel will be a suitable match. Tregillis came across the necessary out-of-the-box thinking from an outside counsel when trying to launch a brand with two competing marks in the European Union – the company needed a quick result and found an attorney who worked out an action plan to deal with both marks, as well as the domain associated with one of them, while also working out the tax issues. An interesting payment incentive that Shilling has used is to reduce the amount paid depending on how long a case was open for. (JW)

Protecting a vital brand during the pandemic – Wednesday’s keynote was delivered by American Red Cross’ Allison Leader. Kicking things off, she explained how, while American Red Cross might have similarities with many brands due to its scale and recognisability, the unique nature of the Red Cross emblem creates special challenges that other brands do not face. For instance, the emblem is protected in order to distinguish military medical services and relief workers during combat. “Essentially, the Red Cross emblem is a way of saying ‘don’t shoot me’ in 350 languages,” Leader explained. American Red Cross adopted the mark in 1880 and has multiple registrations at the USPTO. At the beginning of the covid-19 pandemic, the organisation saw an increase in misuse, counterfeiting, phishing and infringement. As it started to push mask use, for example, it noticed an influx of counterfeit masks. While American Red Cross decided not to create a branded mask, there was public interest in wearing branded masks and Leader started to find multiple uses of the American Red Cross brand in association with masks. A volunteer IP Investigator programme and reporting app was created to drive infringers to a team of volunteers to take down issues. The app approach, as a way to enlist consumers in the fight against fakes, is one that other brands may wish to consider. (JW)

Microsoft tech philosophy spurs trademark department – In Wednesday’s ‘Using technology to transform in-house practices’ session, two representatives from Microsoft spoke about how the technology company’s drive for innovation affects its trademark department. Moderator Cam Gatta, head of trademarks at Microsoft, urged all brand protection teams to consider how certain new technologies could help to streamline the often-overwhelming workloads of corporate counsel, and joked: “I realised when I switched from private practice to in-house that I didn’t have the time to do an A+ job on everything – so I aim to do a very solid B, and if I can do a B with an AI bot, even better.” Elsewhere, Michael Woods, operations program manager at Microsoft, acknowledged that implementing technological solutions “isn’t easy” for legal teams – but can be well worth it in the end. “For example, we use automation programs, so rather than send out multiple emails manually with similar information, we can apply them to a standardised email template to use for emails to counsel around the world. This is a great time saver and the team loves it.” Further, he revealed that the Microsoft trademark team also reviewed the type of trademark searches that it conducted – including the types of classes, jurisdictions and marks in searches – and, “powered by that data”, was able to negotiate a fixed-fee with outside counsel for such work. Ultimately, Woods said that all trademark departments should keep an open mind about how technology can assist: "Stay curious – don’t be afraid to try anything new with technology and see how it could help develop a whole new process for your team.” (TJL)

IP offices urged to implement APIs – In the same session on Wednesday, the work of IP offices in implementing cutting-edge technology was a hot topic. For example, Alessandro Cimaschi, senior legal counsel at Orange, name-checked the EUIPO’s graphical search tool, claiming that it “does an excellent job” in enabling users to search for images and finding similar marks across a variety of jurisdictions. Further, he more generally praised the EUIPO’s TMview search engine as “an aggregator of trademarks that would normally be something we’d pay for”. Microsoft's Woods also spoke of how helpful APIs are at IP offices, which allow data from IP registries (eg, that related to trademark registration or docketing) to be used by third-party software providers. As WTR has reported on extensively in our IP Office Innovation Ranking, the Intellectual Property Office of New Zealand has been a leader in this field, with many registries offering trademark filing data but very few able to conduct office actions using third-party software. Indeed, Woods noted: “There’s a bunch of PTOs that don’t have APIs, but hopefully in the future we won’t need to rely on the IP offices to be able to update our dockets.” (TJL)

Bringing down enforcement costs – Creating a robust enforcement strategy while keeping costs down is an important and difficult balancing act. Having a predetermined strategy for when to take action can be a useful way of reducing the time spent debating over enforcement activity, suggests Christa Cole, head of brand development, enforcement and licensing at Nestlé. As you can never take action against everything, she looks for marks that hit the ‘bullseye’ in a tier system that decides on the level of priority for an enforcement action. Additionally, a brand heat map in the form of a target can help to keep track of how close other businesses’ brands are getting to your own and whether they are at risk of diluting your brand. Visual tools like the tiered bullseye and heat map are also helpful when explaining to the business how and why the trademark team does the work that it does. Marina Depietri, vice president intellectual property, the Americas at Red Bull, added that she finds bringing enforcement work in-house to be a good way of saving on budget. It has also created standardised templates for straightforward cease and desist matters. Since their creation, these templates have not required updating, proving the long-lasting value of the time spent to create them in the first place. Additionally, with the economic instability of the pandemic, sometimes there is a benefit to holding off on enforcement action to see whether the culprits simply disappear from the market in due course. (JW)

A discussion on how to monetise trademarks – Bringing insight into how to monetise a trademark portfolio, discussion turned to the money to be made from licensing marks. This is an important tool for Rotary International, explains Jomarie Fredericks, deputy general counsel and director, intellectual property. While it does not sell a specific product and licensing a mark is a good way to drive revenue, what is important for Rotary International is to control the use of the brand across its volunteer network. By contrast, Starbucks’ corporate counsel, intellectual property, Heather Stutz, detailed how the coffee giant’s licensing model incorporates a huge collaborative licensing network, including a joint venture with Tata for its Indian stores. These kinds of licensing partnerships give Starbucks incredible reach in different global markets. Of prime importance again, though, is ensuring clear control and policing to maintain the value of the marks. Building the brand has taken investment and the need to license and generate revenue should never overtake that work. Turning to budgets, as Fredericks pointed out: “You’ve got to spend money to make money.” The way to get the budgetary allowances to do that, Stutz said, is by forming business-focused relationships with key stakeholders in the company. By learning as much as you can about the business and not just focusing on the legal needs, demonstrating how legal goals will add value to the business becomes easier. The trick to doing this is striding head first into the business, advises Scott Piering, vice president and chief IP counsel at Spectrum Brands. He will join meetings that he is not explicitly invited to, touch base with other groups on a weekly basis and make sure to catch up with individuals in informal chats over Teams whenever there is time available. (JW)

A business-aligned online strategy will save headaches in the long run – Thursday’s masterclass on online enforcement saw experts from Appdetex, Arm, Fitbit, GSK and Wish presenting tips and tricks for maintaining and enforcing solid brands in the digital space. The key takeaway for brand owners? Establish a clear process for aligning your online strategy with business needs, so that the most valuable rights are fully protected from the outset. “Have strong alignment with the business in terms of what brands you care about and what your strategy should be from the beginning,” said David Llewellyn, head of trademarks at Arm. Having a plan in place and determining what is most important to the business “makes it so much easier further down the road”, agreed Jeff Bonham, director, brand protection, the Americas at FitBit. This means identifying the company’s most valuable brands, educating and training colleagues, prioritising the key areas of focus – including specific platforms and sites – and determining when to pursue action – and when not to. That way, you can hone in on the intellectual property that is core to business objectives and ensure that the relevant rights are filed properly ahead of enforcement. Speaking from a platform perspective, “it’s difficult for us as a platform to act on rights that aren’t registered,” admitted Maral Behnam-Garcia, director, brand protection at Wish. “Therefore, my number one tip for brand owners is to make sure your rights are registered properly.” (VA)

Pick and choose your favourite online vendors – Another key takeaway from Thursday’s masterclass on online enforcement was the value of utilising multiple vendors in enforcement efforts. “Different products have different attractions for counterfeiters so you can’t use the same efforts for all of them,” said Oscar Benito, assistant general counsel, corporate and vaccines, intellectual property at GSK. With so many vendors offering distinct services, it pays to pick and choose the best ones for specific online needs – whether that is global trademark or copyright enforcement, monitoring large US e-commerce sites specifically, or UDRP domain name enforcement, among numerous others. Some of these vendors use AI tools to scan thousands – if not millions – of domain names and then highlight to the brand owner the top ones to care about, explained Llewellyn. This helps to ensure that any online infringement is handled quickly and diligently. “One of the great things about working with a vendor is often they have the tools to fill out forms quickly and get the job done, and the tools to trace and track the history of these things too,” reiterated Fred Felman, chief marketing officer at Appdetex. As a result, brand owners do not have to keep track of every takedown request, juggle reference numbers and ultimately carry the load themselves. Instead, they can rest assured that a well-trained vendor has the issue in hand, feeding back to the business via regular reports. “It’s like having another resource out there fighting the good fight without being told what to do,” said Bonham. (VA)

Read our previous WTR Connect coverage below:

• “Exposure to scams is significant” – USPTO trademark commissioner expands on anti-fraud efforts
• Dispelling counterfeit myths, prioritising budgets, navigating political conflicts – WTR Connect week one takeaways
• Being an ally is not enough, we need to be accomplices too: a candid discussion on diversity in the IP profession
• “Chinese undertakings have come back quickly and forcefully”: EUIPO executive director reveals the latest filing trends
• Commercial awareness is a brand’s best friend: how to build resilience without breaking the bank