In the not-too-distant past, intellectual property lawyers’ main focus was to register trademarks and monitor for infringements in traditional media, which would then be actioned in individual jurisdictions. However, in recent years, trademark law professionals have had to adapt their approach to meet the host of new challenges presented by technological developments. The growth of the internet provides lawyers with an opportunity to future-proof their services by educating and guiding clients on protecting themselves from a whole new plethora of web threats, and safeguarding intellectual property online.
With its estimated 4.63 billion pages, the internet is vast, relatively unregulated and does not fall under any single jurisdiction. The requirements for protecting trademarks have significantly changed and both brand owners and their legal counsels have been forced to update their strategies for rights protection accordingly. The internet, whilst offering opportunities the like we have never seen before, is proving to be particularly challenging for brands battling against fraudsters. The evolution of new platforms is changing the way consumers and brands interact, and simultaneously providing cyber criminals with an array of fresh opportunities to defraud brands and their customers.
So what does this new online landscape look like, and how can lawyers best advise their clients on brand protection in this space?
Expanding opportunities, rising threats
It is no secret that online platforms such as websites, blogs and social media networks can provide brands with a powerful new way of reaching global audiences, at virtual no cost and marketing their products and services on an unprecedented scale. However, with the new opportunities come new dangers, with criminals finding ways to exploit businesses and their brands online.
The sheer size of the internet makes it impossible for governments and regulators to consistently enforce laws intended to protect trademarks and intellectual property online. However the low operating costs, uninhibited access to a global customer base and high levels of anonymity, mean the online channels are the perfect environment for an array of fraudulent activity, including fake websites, social media pages, and the sale of counterfeit goods. Indeed, according to the IP Crime Annual report 2014, there was a 15% increase in the sale of counterfeit goods online in the past year alone.
Counterfeiting is an issue that affects all industries. In July 2015, UK police seized 6.2 million doses of illicit medicines in a global operation targeting counterfeit pharmaceuticals promoted on social media. The initiative was led by the Medicines and Healthcare products Regulatory Agency (MHRA), who worked with Facebook and Twitter to close social media profiles selling and advertising the fake substances. Nearly 1,400 websites selling illegal drugs were also shut down, and raids took place that uncovered £15 million worth of counterfeit drugs and medical devices.
Whilst high-profile crackdowns like these are certainly welcome, businesses cannot rely on the authorities alone to tackle the fraudsters. The sale of counterfeit goods from fake websites can have serious consequences for brands – not just to revenues, but to reputation too. Research conducted for NetNames’ Internet 2020 report found that 78 per cent of internet users would shun a brand if they found themselves on a bogus website purporting to be that brand.
Alongside counterfeiting, domain name hijacking, trademark abuse and cyber-squatting are increasingly common threats and require a new level of vigilance and protection. Brands and their lawyers must recognise the constant evolution of online channels and how these changes affect authorised and unauthorised online activities.
Advising brands on fighting the fraudsters
Legal teams must firstly ensure that their clients are aware of the risks posed by the internet, and how they can work to minimise the damages to their brand and customers by devising an online protection strategy.
The initial step for a company is to take control of their domain name. This is the most valuable online asset for a brand, as it represents its internet visibility. Knowing what domain names the client owns is therefore a crucial part of maintaining control and security. Once relevant domains are registered, they must be managed and monitored closely to ensure consistent registration, allowing cyber-squatters and imitation sites to be acted upon swiftly and effectively.
Brands must also be made aware of the changes currently being experienced by the internet. The introduction of new domain name endings, also referred to as generic Top Level Domains (gTLDs), means that the internet will become segmented into new communities of interest, such as dotTechnology, dotShopping, and so on. Brands will also have the opportunity to buy their own dotBrand website endings, allowing them to own a specific slice of the internet – dotBMW, dotHermes and dotBarclays have all been registered, to name a few examples.
Being educated on changes and having a strategy in place has never been more essential in this revolutionary phase. The new gTLD programme has opened up a new front in the battle to protect brands. Lawyers need visibility of gTLD releases in the pipeline so they can identify any potential for infringements and alert their clients. This will prompt them to register trademarks in the Trademark Clearinghouse (TMCH) where possible and stay on top of new websites, detecting any issues before they develop and staying one step ahead of cybersquatters.
The rise of social media and online review sites means that even if brands choose not to engage in proactive marketing, they must be aware that fraudsters can still exploit them there. Even though sites like Facebook and Twitter have processes in place to deal with intellectual property violations and suspicious advertisements, brands must also remain vigilant and help to identify any fraudulent profiles.
The web now poses bigger threats than ever before, and businesses are increasingly concerned about their brand protection. In response to this, lawyers can partner with brand protection companies to step up their services so that they cover digital threats and advise brands on implementing a robust, proactive strategy in place to protect themselves and their customers, safeguarding vital revenues and reputation from cyber criminals.
The responsibility to protect consumers ultimately lies with the brand owner and their advisers, who require the ability to monitor the internet, detect infringements and issue enforcement notices across multiple jurisdictions. It can be relatively simple to do this, but many brands are not considering the consequences and reacting to these new challenges, which is exactly why specialist legal and technological guidance in this area is so crucial.