You have been involved in a number of interesting copycat and smell-alike cases. What unique challenges do these disputes raise and how has your team previously overcome them?
It depends on the country at issue because the laws and precedent differ significantly depending on whether the dispute arises in a common law or code-based system. Common law countries tend to be more challenging since the burden of proof often requires us to demonstrate confusion – lookalike manufacturers sometimes try to take some elements of our proprietary products but not all, so that they can claim some defensibility. Thus, depending on the facts of the matter and the jurisdiction, we may rely on common law trademarks, trade dress, design rights, registered trademarks or even copyrights to attack an infringement. We also have strong remedies available to us in terms of damages and injunctive relief, and we pursue all such rights on behalf of Coty and our licensors when appropriate, as we believe that this is important for consumers. Because we have been willing to go to trial on these issues in the United States and many other countries, and have established solid precedent, we hope that this has created some deterrent to copy Coty and licensor brands.
Corporate resources are finite. How do you decide which enforcement efforts to pursue and ensure that these are worth the cost?
From an enforcement standpoint, we are guided by a few considerations. Number one, regardless of cost, we need to protect the key trademarks of Coty and our licensors by ensuring that consumers are protected from buying counterfeits or infringing products. If there is a clear infringement, the budget issue is less relevant. That said, clear infringement cases are only part of the story. On the more subtle scale of infringement, we have had reasonable success with traditional enforcement methods such as cease and desist letters and online takedown initiatives. We also bring a lot of litigation, often in jurisdictions where costs tend to be lower and the process is quick, as sometimes the reach of a ruling can have a pragmatic impact on a wider-reaching basis. For US litigation, we are apt to pursue a case where a positive precedent might shape the law in a positive direction for trademark owners and brands – especially in areas that are important to Coty and our licensors.
Why is it important to collaborate with other business functions and how do you build strong working relationships with key stakeholders?
We do a lot of training with our marketing and R&D teams, and we constantly update our processes and training decks. This is an important two-way street as marketing is the lifeblood of our product initiatives and we need to have early knowledge of new products coming down the road for trademark clearance purposes as well as potential design protections and occasionally patents. Our work also crosses over to marketing claims, so we need to understand what we are proposing to say about product claims to ensure that they have appropriate support. Of course, we also work closely with finance teams on a wide variety of issues relating to budget.
How has IP protection in the beauty industry changed in your 12 years at Coty?
In the beauty industry, particularly in the United States, clearing marks has become harder due in part to common law usage on the Internet. This is likely to continue as more and more commerce shifts to online sources. It has also become more difficult to obtain a trademark registration in many countries for a product design, which makes enforcement against lookalike designs more challenging. Greater use of registered Community designs is a helpful asset in Europe.
How different do you think corporate trademark practice will be in five years?
Trademarks will continue to be a key asset to corporations and of great import to the balance sheet. As such, important trademarks will still to need to be registered and enforced in key sales countries. That said, especially coming out of the covid-19 pandemic, there are sure to be intense budget pressures and perhaps a culling of registrations in jurisdictions that are not critical from a sales perspective will become a focus. Cost concerns may also lead to more outsourcing of matters such as renewals and docketing. With cost concerns, return on investment on litigation activity will become even more of a gatekeeping analytical exercise before commencing a lawsuit or in considering defence and settlement issues.
Senior Vice President and Global Deputy General Counsel
Joseph Conklin has been with Coty for over 12 years in positions of increasing responsibility. He leads the IP team and is responsible for trademark, patent, design and brand protection matters worldwide while working with a team of roughly 20 professionals. He also heads up litigation and recently served as interim general counsel to the company. Coty’s owned and licensed beauty brands include adidas, Burberry, Calvin Klein, Cover Girl, Gucci, Hugo Boss, Rimmel and Wella, among many others.