Building an effective enforcement strategy

Protecting and enforcing trade mark rights does not occur only at the local trade mark registry in the form of a formal opposition. Effective enforcement requires looking at the bigger picture and approaching it from a number of angles.
 
In recent years, we have seen an increase in brand owners taking to social media in order to try to combat counterfeit products, with brands even losing the PR battle despite the legal facts of the case tipping in their favour (read our article on social media brand battles here). Therefore, whilst shining the light on counterfeit products may assist brand owners, many brand owners prefer a more direct approach.
 

The creative approach

Other brand owners are getting more creative in their trade mark filings to try to thwart counterfeiters. In 2017, Gucci filed applications for the mark “GUCCY” and later sold bags bearing the mark. A few years later, Gucci launched its FAKE/NOT collection which featured bags, shoes and apparel emblazoned with the word “FAKE”, which brought media attention to the issue of counterfeit designer goods. More recently, we have seen Lululemon adopt a similar approach and file applications for “LULULEMON DUPE”, seemingly trying to address products being offered as duplicates of, and alternatives to, their popular leggings. Though, interestingly the applications cover a range of services in relation to retail and advertising (as opposed to goods in relation to clothing and athletic accessories). It remains to be seen what services Lululemon offer under this mark and how they enforce it (if, indeed, they chose to do so). In any event, the applications likely achieved the desired “win” in the form of the press and social media posts concerning “LULULEMON DUPE”. Indeed, educating one’s consumers can also form part of an effective enforcement strategy.
 

Practical and effective brand enforcement methods

Whilst one could file applications and register domain names for an unending number of variations of their brands, given the cost of this, number of possible variations and issues concerning intent to use and bad faith (read our article on the UK’s approach to bad faith trade mark filings here), such a scattergun/defensive approach is not the most effective.
 
Here is our checklist of proactive and reactive actions to consider when setting or re-assessing your enforcement strategy:
 

Proactive approach

1. Registrations – having a registration in place often means that you can deal with infringements in a quicker and more cost-effective manner than if you have to rely on unregistered rights and Passing Off.
   
   It is good practice to regularly check that you have the right trade marks registered in the right classes and territories. Read about our portfolio health check Brandfit^® and how we can help make your portfolio fit for purpose here.
    

2. Customs Recordals – having AFAs (Application for Action) in place can help to stop counterfeit products from entering the market. Based on the registered rights you have in place and the information supplied concerning spotting counterfeits, Customs agents will proactively seize suspected counterfeit products at the (air)port. Most customs seizures need to be responded to within a short amount of time so it is important to have a quick and established strategy to deal with seizures.
    

3. Set up watching/monitoring services to alert you to third party activities either online or at the registries.

Reactive approach

4. Private investigations and test purchases to assess the scale of the issue and identify key facts regarding the source of the goods and to confirm they are counterfeit. These can be used to assist with preparing C&D letters (we always recommend considering whether an approach to the third party is appropriate), gathering evidence or with referrals to law enforcement. 
    

5. Trading Standards Referrals – if there is a physical shop where infringing products are being offered, consider reporting this to the local Trading Standards Office who may be able to conduct a seizure and initiate criminal prosecution proceedings. This may be particularly relevant for brand owners in sectors that are prone to counterfeiting such as fashion (in particular, clothing and accessories), healthcare and cosmetics.
    

6. PIPCU and the UKIPO – as an alternative to Trading Standards, if counterfeit products (excluding pharmaceuticals, foodstuffs, or tobacco) are being offered online, consider a referral to PIPCU. The Police Intellectual Property Crime Unit (which is part of the City of London Police) works with the UKIPO to combat counterfeit products and piracy in relation to “physical goods with an online nexus” and “digital content”.
    

7. Action Fraud – in the case of fraud or cybercrime, consider reporting to Action Fraud.
    

8. Take down requests to service providers such as Meta, Amazon, or Domain Name Registrars to take down infringing pages and websites.
    

9. Company Names Tribunal (CNT) – if you have goodwill/reputation in a brand name and a third party has registered a company name that is identical/substantially similar to that name, then a CNT Complaint can be a quick and cost effective way to force a change of company name (with many actions going undefended). However, this does not deal with any use and so a CNT Complaint should be considered in conjunction with other action. 
    

10. Domain Name Complaints to request the transfer or cancellation of domain names that have been registered and/or used in bad faith.
     

There is no one size fits all approach across different brand owners, a brand owner’s individual brands, or even for each problem encountered. But, avoiding the scattergun approach and establishing a clear protocol will put you in the best possible position for tackling counterfeits. 
 
For more information or if you have any questions about our Anti-Counterfeiting offering, please contact Alicia Nash, Carol Nyahasha or your usual Kilburn & Strode Advisor.