Many brand protection tools and technologies from third party vendors can be used and administered by a non-lawyer working in the IT, marketing, or operations department. To maximize the effectiveness of these tools it’s best that SMEs retain knowledgeable legal counsel to use the tools or provide guidance regarding their findings – one who has expertise in intellectual property rights management and enforcement. Legal counsel can help a brand client understand the difference between types of infringements, what constitutes “fair use,” what trademarks are “generic,” what is a “grey market” product, or what might be a “false positive” detection result. This specialized knowledge is important for making enforcement efforts efficient and effective.
International anti-counterfeiting and IP protection service providers not only can help you detect counterfeits and infringing goods online, but they can also help you design, develop, and implement effective anti-counterfeiting and brand protection programs. You can also undertake enforcement on your own. Here are a few recommendations.
Once you have identified the counterfeiter, whether he/she is operating a physical store or a website, you should send a “cease and desist” letter demanding that the owner of the store or website cease infringing your intellectual property rights.
Cease and desist letters do not have to be in any specific format but, at a minimum, should include the following elements:
If you do not get a response from the infringer or do not see the counterfeit items removed or deleted, you may need to consult with your legal counsel on next steps to enforce your rights under the laws of your jurisdiction.
If you have discovered infringments or counterfeits of your product on a standalone website, you will need the domain name registration data (ie, the name and contact information of the website owner) in order to send cease and desist letters and take other enforcement actions.
To obtain domain name registration data, you must request this information from domain name registrars and registries and provide a legal basis for making the request. When making these requests, you must take the following steps:
Many counterfeiters use your images/photographs of your product in their counterfeit listings. This gives you an opportunity to quickly and efficiently take these listings down on the basis of copyright infringement.
In the United States, a DMCA claim, also called a DMCA “takedown notice,” is a complaint made against an online content creator who is infringing your copyrighted work – for example using an image of your product on a website selling counterfeit products. The Digital Millennium Copyright Act (DMCA) is a set of laws in the US aimed to protect copyrighted content on all digital mediums. You can send the takedown notice to the website owner if their email address or mailing address appears on the website or alternatively, you can send the notice to the company that is hosting the website. You can find the name of the hosting service provider by looking it up in the WHOIS records (see Helpful Link above). The takedown notice should contain important information such as your information and statement of your copyright interest, the URL where the infringement is found and a description of the infringement. In the box below, we have provided a template for composing a DMCA takedown notice. After receiving a notice, a hosting services provider or content creator must remove the infringing work or else respond with a defense of the creator’s use of the copyrighted work. There are no fees to file a DMCA complaint.
To Whom It May Concern,
The following information is to assert my rights and request a removal of allegedly infringing web content under the Digital Millennium Copyright Act (DMCA). I am contacting you as the agent for the site where the infringing content currently appears. This is a Notice of Infringement as authorized in §512(c) of the U.S. Copyright Law.
I am the copyright owner of the content, and the following information is true and accurate.
I declare, under penalty of perjury, that this notice is true and correct and that I am the copyright owner entitled to exclusive rights which I believe are being infringed.
Signed this ________ day of ___________, 20_____ in (Your City, State, Country).
(Your Signature or eSignature)
Counterfeiters sometimes register domain names that are confusingly similar to domains you have registered for your business; for example registering a misspelled domain name “UNDERARMOR.COM” to sell Under Armour counterfeit athletic apparel. If you detect a domain name that is infringing your brand or trademark, you can file a complaint under the Uniform Dispute Resolution Policy (UDRP). Unlike filing DMCA takedown notice however which doesn’t have a fee, filing a UDRP complaint with an arbitration forum costs approximately $1500. The benefit of making the filing, however, is that if you prevail against the infringer, the domain name is transferred to you which takes the domain name out of circulation and use by another infringing party.
Many counterfeit goods are sold by unauthorized third-party sellers using popular e-commerce or social media platforms. Most major platforms have their own detailed processes for reporting sales of counterfeit goods. SMEs and brand owners must follow these processes if they wish the platform to act against the illegal seller on the company’s behalf.
Each e-commerce platform provider has its own requirements for submitting a complaint regarding infringements or counterfeits. Please make sure you satisfy all the requirements for a submission when you make a report. Failure to include all the information requested will result in the complaint being rejected or not processed properly. Make sure you keep a copy of all the information you provide, the date you submitted the complaint and any confirmation receipt you receive acknowledging your submission. Also, it’s good practice to save screenshots of the counterfeit products you find on the platform, the name of the unauthorized seller, and any associated URLs linked to the pages where the counterfeits appear.
With the information above collected and recorded, you can contact the platform and file your complaint. Below is a convenient chart with links to public reporting links.
|GENERAL IP REPORTING LINKS
In addition to being able to report infringements with the platform directly, some platforms offer special programs in which brand owners may enroll and list their product names and trademarks, and services in a registry database. Other platforms require enrollment before you can submit a report or complaint. IACC recommends that you enroll in these programs now even if you aren’t currently seeing counterfeits so that when you do need to make a report, you can do so quickly. Platforms use this information to proactively police infringing listings and to expedite reporting of counterfeits. As with IP asset registrations, sometimes your resellers or other business partners may offer to register you for ecommerce brand protection programs on your behalf. It is important that you do NOT let third parties register your participation on your behalf as they will have access to valuable enforcement data you may want to see, and this circumstance can also negatively affect your ability to enforce your rights on the platform.
|BRAND PROGRAM LINK
|Brand Registry Program
|Verified Rights Owner Program (VERO)
|Brand Protection Program
|Brand Partner Program
For each enforcement action you take to protect your brand, whether it be sending a Cease-and-Desist letter or a DMCA takedown notice, you should maintain a record of your actions. Keep all of the evidence you have collected to prepare those complaints including screenshots of the counterfeit products, the URLs where they are located, the seller’s contact information or seller IDs, and other information that is useful for law enforcement purposes, legal actions, and future complaints against repeated unauthorized sellers and non-compliant ecommerce or social media platforms.
Finally, if you are selling products on ecommerce or social medial platforms, it is helpful to cultivate a personal relationship with individuals working on brand protection and anti-counterfeits issues at those companies. If you don’t know who to call or email to set up a meeting or conversation, contact IACC and ask for information on whom to reach out to share your experience, concerns, and anti-counterfeit activities. Having a good relationship with platforms may help you get expedited responses to your complaints.
RogueBlock®, the IACC’s payment processor initiative, is a collaborative effort of the IACC and world’s largest credit card and payment processor companies to create a streamlined, simplified procedure to report and take down merchant accounts of online sellers of counterfeit and pirated goods. We hit criminals where it matters most – their wallet. Taking down just one merchant account, could affect hundreds of illegal sites operated by the counterfeiter. Learn more here!
IACC MarketSafe® SME Program, the IACC’s strategic collaboration between the IACC and Alibaba Group, provides small businesses with a streamlined mechanism for expedited take-down actions against infringing listings and sellers. It also provides complex issue resolution and special policies to address counterfeiters’ evasive tactics. This free program gives small entrepreneurs the hands-on support of dedicated, Chinese-speaking analysts. Best of all, this program is free for SMEs.
IACC – Amazon Program, the IACC’s partnership with Amazon, is a unique voluntary collaboration supported by senior management and specialized teams within Amazon and the IACC. The Program focuses on streamlining, accountability and meaningful engagement – providing an expedited resolution path for enforcement issues as well as a real-time feedback mechanism to drive long-term solutions. Learn more here.
Working with law enforcement can take your brand protection efforts to the next level and in some instances, demonstrate to counterfeiters and repeat offenders the seriousness of your enforcement efforts. By engaging law enforcement in your case, you are harnessing the power of the government’s resources and manpower. Private industry is dwarfed by the reach of law enforcement and their access to prosecutors, courts, media, and the community. Perhaps the most serious implication is their ability to arrest violators and seize counterfeit products.
Working with law enforcement, at least initially will require some effort on your part. Being prepared is critical to an investigation’s success. Ensure your allegations of criminal conduct are accurate and recent, to allow the authorities the ability to confirm your claims. Here are some things to keep in mind:
Law enforcement can be categorized by jurisdiction. Each country will have local references to law enforcement, but they generally fall into three tiers: local, state, and federal or national. In the U.S., local police or sheriff’s offices cover a county, city, or town. State authorities include the state police or state attorney general. Federal authorities include the FBI, Customs and Border Protection (“CBP”), and Homeland Security Investigations (“HSI”). Some IP offenses, such as illegally importing counterfeit goods, may fall under the exclusive jurisdiction of federal authorities.
Depending on the jurisdiction and type of the illegal activity, you’ll need to meet with the appropriate agency to report the crime. Determine what the elements are of the crime you wish to report and the extent of the infringement. This is where having registered your IP early on will be useful, if not necessary. Be prepared to show relevant IP registration documents.
The authorities will assess the potential case to determine the existence or seriousness of the criminal violation, and their ability to investigate and successfully present it to a prosecutor. Some law enforcement agencies, especially at the local level may not be familiar with IP cases and you may have to provide them some basic IP education. Be prepared to demonstrate that a crime has occurred and that you (brand) are the victim. Know which law has been broken in the jurisdiction in which you’re taking action and what your IP covers. For example, if you’re contacting a state or local agency, cite the laws of that state. For Federal agencies, cite the appropriate Federal criminal code. Value thresholds for federal cases are set much higher than local or state jurisdictions. We strongly advise you to engage legal counsel and assistance with these cases.
Provide information that supports your claim; undercover purchases or “buys” you have made and any evidence you have collected.
Other factors to consider with criminal cases:
Law enforcement agencies around the world conduct regular operations to stop counterfeiting activities. As a business owner, you can participate in these operations. In the Appendices, several ongoing international law enforcement operations are described. To maximize the effectiveness of a company’s participation in a law enforcement operation it’s important to know and follow these key recommendations:
Also please know that law enforcement typically will not provide feedback relating to a company’s submissions, however they do provide overall figures and data relating to offline/online seizures, arrests and take downs.
For most countries, customs authorities are the first line of defense in stopping counterfeits of your product at the border. They can also be a valuable source of information about potentially new origins or variations of counterfeits. We highly encourage you work with customs agencies in your respective countries, as well as those in which you do business or manufacture. Please note however, that customs authorities in most countries will largely or solely focus inspections on goods coming into the country as opposed to those leaving the country.
Most countries will require that the IP you want to protect through customs are registered. This is another instance in which registering your marks early will facilitate your protection of it in the future. Many countries have systems in which brands can register with their customs authorities. In some countries, like in Canada, registration is free, while others charge a fee.
U.S. Customs & Border Protection
Working with Customs & Border Protection is a low cost and effective way to harness the power of CBP to stop infringing goods at the border.
The IACC’s Law Enforcement Training Program has been a huge benefit to our brand members as it connects brands with frontline law enforcement in the U.S., Latin America, and other countries. The trainings allow brands to educate and build relationships with national, state, and local police, customs, and prosecutors. Presently, we are conducting virtual training events which have become quite popular.
Pre-Covid, the IACC held 24 annual training events in the U.S. along with events in Latin America, Europe, Asia and the Middle East. Over the past 30 years, our program has educated 45,000 law enforcement personnel. Watch for announcements and sign up to participate in training. We look forward to in-person training upon requests from law enforcement agencies.
The IACC would like to make you aware of our Law Enforcement Training App through which we assist law enforcement with relevant tools to enhance their IP protection efforts. The App contains brand training manuals, relevant state laws as well as brand contact information, enabling law enforcement instant access to that information.
SME’s can maximize their reach by making their training materials and contact information available to officers in the field investigating IP crime 24/7/365. Member and non-member brands are encouraged to submit their training information.
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