Online brand protection takeaways: tales from the trenches
This is an Insight article, written by a selected partner as part of WTR's co-published content. Read more on Insight
Throughout 2019 WTR hosted a number of events that provided practical, strategic brand protection takeaways. Below are some of the key action points and insights.
Brand Protection Online and Managing Trademark Assets US, 5-6 March 2019, Chicago
How to evidence ROI in brand enforcement efforts
One struggle for trademark teams is evidencing return on investment (ROI) when it comes to anti-counterfeiting. Yet doing so is critical for both tracking success and making the case for increased investment. There is no ‘one size fits all’ approach, says Daniel Shapiro, director of global strategic partnerships at Red Points, who notes that “everyone is looking for that magic button that tells them how much they’re losing from counterfeits”. He goes on to state that it is often a case of taking what his father called a ‘sophisticated wild educated guess’. However, there are methods that can be adopted. For instance, Velcro USA’s Alexandra DeNeve explained that tangible results speak volumes: “I took a screenshot of an Alibaba search page for our brand and it was an obscene number of [infringing] hits. Six months later, after enforcement work, I did the same search and the number was dramatically lower – and the first 10 results were official listings from our company. Those two screenshots showed clear ROI to our higher ups.”
Online policing is not about volume
Policing an ever-expanding universe of domains, e-commerce sites and social media can be a budget-busting task. David Cooper, vice president of MarkMonitor, argues that in such an environment brands must accept that they simply cannot catch everything, noting that: “If you try to monitor everything, everywhere, you won’t be able to track effectiveness. It ultimately isn’t about volume; you need to look at where your customers interact online and then have a laser focus on that.” Crucially, technology must be wielded effectively to help brands keep up with infringement. Red Points’ Shapiro argues that: “There isn’t a scalable way to deal with online marketplaces that doesn’t use technology. If you don’t use tech to keep up with counterfeits on online marketplaces, you’ll fall behind. There is no way to do it without technology – and multiple types: deep-learning artificial intelligence, machine learning, image recognition. There’s always a need for the human touch, but you need to use the strength of technology for an effective online enforcement regime.”
Time to audit your domain portfolio
At a time of tight budgets, one often-overlooked way to cut back on spend is to figure out whether the domains that a company owns remain necessary. Signe Naeve, director and corporate counsel, IP, at Starbucks Corporation, recounted: “We were spending hundreds of thousands a year on [defensive] domain enforcement, and we started to question whether that was making sense from a risk/reward perspective. You can always buy something, and I was looking at our portfolio of our 3,000 domain names, and I worked to identify which are the domains we own, whether we are using them and, if so, how we are using them. Three quarters, we found, were not being used. Some were defensive registrations, but others were for short-term marketing campaigns that we don’t use anymore. So, we are now looking to work more offensively and less defensively. From that, we’ve narrowed down our list and are deciding whether to actually keep the others or not. If you haven’t done an audit, you should.”
Know your audience – or risk wasting enforcement dollars
For many brand owners, enforcement on social networks is often down to the popularity (measured in active users or web traffic) of social platforms – and it is for that reason that Facebook and Twitter are generally the most monitored social websites. Indeed, as described by Jeffrey Fridman, the global legal lead of trademark and brand operations at Accenture, “social media is probably the biggest example of the idea that jurisdictional borders are disappearing, and that suddenly every company is a global company”. But is targeting the biggest social networks really the most effective and efficient enforcement method? Not necessarily, according to Sean Kolodji, senior brand adviser at Incopro. “All brand owners should consider that social networks are used in different places and by different generations,” he explained. “In some countries, the only website they know is Facebook – that’s the entire Internet to them. You must also think of what the target audience and demographic is for your brands; older people are more likely to use Facebook most often, middle-aged people are more likely on Twitter, while younger people are on Instagram, SnapChat or even Tiktok.” Therefore, if your brand is especially popular with young people, perhaps prioritising enforcement efforts on Instagram rather than Facebook could be worthwhile.
Brand Protection Online Europe, 14 October, London
PIPCU needs you
Peter Ratcliffe, detective superintendent and national fraud lead at the City of London Police, was keen to highlight the importance of industry collaboration with the Police Intellectual Property Crime Unit (PIPCU): “The key role for me now is engagement with stakeholders and the community. That’s never been more of a focus than now for us. When I first joined, police work was seen as being our business, but we’re a small team covering the whole of the United Kingdom and we need your help to do that. It’s a vast network with many sectors and it’s very resource intensive to take out organised crime groups.” Ratcliffe and his colleagues work with trade associations and engage in outreach at events, but are keen to encourage rights holders to speak to them. They also welcome additional support (eg, via secondments). Ratcliffe identified a number of associations and corporations, including the MPAA and Sky, that have staff embedded within the unit, which has been invaluable in developing deeper expertise. He concluded: “At the end of the day, we’re police officers and we can’t know everything. Intelligence sharing is important. It’s really all about working together.” The door is clearly open for brands wishing to enlist in PIPCU’s efforts against infringement.
Bringing in consumers as brand allies
The public can play an important role in the fight against counterfeit goods. Zeeger Vink, IP director at Maus Freres, said that the key to effective brand protection management online is to “look at what the consumer sees”, adding, “we have to analyse their behaviour online and then use our legal tools to keep up”. One such way is to enlist consumers to help. “There was initially resistance as companies don’t like to talk about what they’re not producing,” he noted. “If you tell a consumer not to buy counterfeits, you have to also show them where to buy authentic [products]. We put in direct communication channels with us. It’s important for a consumer to be able to tell you where the problem is. It’s free and you’d be surprised how many people are willing to help you.” That strategy has worked, Vink revealed, with plenty of information on fakes that the brand protection team had not previously been aware of. “It is surprising how many people really want to help,” he said. “It’s as if they are almost employees – it would be a waste to not use that information.” Of course, there are risks associated with bringing in consumers to crowdsource information on fakes – but for many brand owners, the rewards vastly outweigh them.
Time to take control
In a session that focused on the changing domain name landscape, a number of strategies were raised for more effective management of a domain portfolio. According to Jesper Knudsen, CEO of BRANDIT, most brand owners do not treat the issue seriously enough. “Most companies have a meeting or two and then think they have an effective domain strategy set,” he said. “But when it comes to action, there’s often a lack. Domain name strategies need to be treated extremely carefully, so time must be invested to do it professionally.” Part of that discussion must be considering the risks when monitoring, as well as when, and how aggressively, to pursue cease and desist letters. He noted that with the growing domain environment (due to new gTLDs), it is now “impossible to manually monitor”. Knudsen added that it is a brand’s own domains that are just as important to track, because “if you can be hacked, you will be hacked”. Indeed, moderator Julius Stobbs from Stobbs IP agreed, saying it’s “surprisingly often” that clients have little understanding of the domains that they own or need to protect. Another speaker, Martin Sutton from the Brand Registry Group, said all brand protection professionals must understand their entire domain portfolio, including the ‘critical domains’ that must be protected at all costs. “Wrap those critical domains in lots of protective cotton wool, then maintain control and limit the people that have control of them.”
What to expect from the rights protection mechanisms review
In a session focusing on new gTLDs and the changing domain name landscape, the current review of rights protection mechanisms was highlighted, with a number of contentious issues identified for engagement for rights holders. One relates to geographical indications, with Susan Payne, head of legal policy at Com Laude Group, explaining: “The operator of the Trademark Clearinghouse (TMCH) has been accepting [geographical indications] GIs under the header of marks protected by statutes and treaties. However, the working group feels that this was not what was intended and that this group was for marks such as Red Cross. So, one recommendation that is likely is that GIs will not be covered in the TMCH going forward. This will go to public comment, so if GIs matter to you, you will want to comment.” Other possible recommendations that may be coming down the road is for TMCH data to be public and whether marks with a design element should be accepted. These are all issues that brand owners should engage with, not least to ensure that the IP community’s voice is heard. Sutton concluded that: “The benefit of ICANN’s multi-stakeholder meeting is that anyone can get involved. The downside is that anyone can get involved. So, it is crucial to engage and respond to public comment periods.”
Work with registries and platforms
Red Points’ Shapiro moderated a discussion on how to utilise the relationship with registries and e-commerce platforms for more effective takedown requests. Superdry’s James Beeton and City of London Police’s Ratcliffe spoke about their experiences, with Ratcliffe noting the phenomenal work that the police has achieved through its relationship with Nominet. Together, they have taken down more than 100,000 infringing websites, 48 hours after the police statement. Beeton also brought attention to the work being done by e-commerce giants Alibaba and Amazon. However, he did call for more data transparency on the takedowns made by platforms. “I’d love to know what products were removed, and in what quantities. It’s fantastic to know they are being removed, but to know where they’re based would be so helpful. It’s a tricky one, especially with [the EU General Data Protection Regulation] GDPR,” he admits. Finally, Shapiro emphasised that when talking about infringing e-commerce listings, we should remember who the bad guys are. “Often we rely on the platforms to do the heavy lifting,” he said, noting the stellar work actually being done to remove infringers from the marketplace.
The app environment is the new playground for infringers
In the session on apps and social media, there was a clear sense that apps will increasingly become the online battleground for trademark enforcement, with takedown a key challenge. Jennifer Chung, general counsel at AccuWeather, noted: “We’ve found apps that look like ours on black-market sites. They were using our data, but they weren’t our apps. How do I take these down when there’s no policy on the site? There’s no email, there’s no contact. What’s the solution?” Superdry’s Beeton added: “What was the case five years ago, where people would use an online marketplace to sell a product, is now a lot less common. Now we’re monitoring social media and apps. An app might have a listing active for a day, and if you don’t catch that on the day, it’s gone. We’re dealing with something much more ephemeral.” Critical to success, alongside proactive policing, is a strong relationship with marketplaces – or at the very least, a good sense of their takedown processes.
Data privacy, a new branding opportunity?
While data privacy legislation can cause enforcement headaches, is there a positive pay-off for brands? Coty’s Michelle Levin ended the final session on an intriguing note, considering the potential for privacy to become a core part of a brand’s image. “Privacy is about trust. When you have a brand, building that is about trust. I’m encouraging my brand team to think of privacy as an integral part of the message to our consumers,” Levin explained. A call for more data transparency from consumers should be responded to with brands becoming trusted through their open communication of what their data is used for. This in turn will keep the market from being uninformed when it comes to fears over data misuse. Dyson’s category head for IP enforcement, George Sevier, added that company founder James Dyson was conscious of how people’s trust in the brand can be shattered by data misuse long before GDPR. In fact, the company refused to require more data than necessary from their buyers, creating a sense that consumers recognise Dyson use data in only the right ways. Finally, an interesting question came from the audience: What about young consumers offering to pass over additional data for discounts and deals? Levin responded that there must always be a choice to opt out of additional products and services. However, collecting data in return for giving users something that they want is far less likely to result in a complaint. Ultimately, it underscored a shift in the way ownership of data is considered and the way it is valued and used.
WTR has a number of events planned in 2020, with topics including online brand protection, managing trademark assets and brand strategy. These will be held in Brazil, China, India, the United Kingdom and the United States, with more to be announced. Find out more on the WTR events website (www.wtr-events.com).
Note: Individuals quoted from the various WTR events are credited as per their company/firm affiliation and job title at the time of the event.