20 May 2021

'We are in something of an arms race' - IP chiefs on the global fight against fakes

Brand protection heads at Diageo, Manchester United and PopSockets reflect on their work ahead of the Anti-Counterfeiting World Law Summit

(l-r) Danielle Prince, Louise Butler and Ed Barker

Ahead of the inaugural Anti-Counterfeiting World Law Summit, which takes place as a virtual event on 22 June, we asked three speakers to reflect on aspects of their work. This is an edited version of their responses.

How is digitalisation affecting IP enforcement?

Danielle Prince, head of brand protection, EMEA and APAC, PopSockets

Digitalisation has made counterfeit products more available and accessible to consumers. Some platforms are not responsive and proactive which means that listings can be visible for longer periods of time.

Ed Barker, head of IP and legal governance at Manchester United Football Club

The majority of our IP enforcement efforts are now online. It feels like we are in something of an arms race, with counterfeiters adopting more sophisticated methods to avoid detection and us in turn looking to our providers to innovate to help us tackle this.

Louise Butler, global head of brand protection, Diageo

For anti-counterfeiting work, digitalisation has had both a positive and negative impact. The rise of e-commerce has seen an increase of counterfeit products for sale online. This is particularly concerning in our industry as we are seeing many consumers buying spirits online for the first time so they are more likely to be duped into buying fakes. On the positive side, developments like the Enforcement Database in Europe allow the rapid sharing of intelligence between brand owners and law enforcement across borders and this can only be a good thing.

How did you overcome the biggest IP challenge you have faced in recent years?

Butler: The biggest challenge our team has faced recently is probably the increased involvement of serious organised crime groups in spirits counterfeiting. To overcome this, we have had to pivot our strategies away from focusing only on domestic counterfeit products towards a more cross-border, global view of the issue.

How has the pandemic affected the nature of the legal problems you are solving?

Butler: The pandemic has caused a shift in both the level of counterfeiting we are seeing and our response to it. Counterfeiters in our industry have used the pandemic as an opportunity and we have seen increased levels of counterfeiting in many markets. Our response has had to change due to remote working. Our engagement with law enforcement is not largely virtual although we are hoping that this will change in the coming months as lockdown conditions begin to lift. Thankfully, law enforcement continued to focus on counterfeit spirits during the pandemic and we have had some successful actions. We are also seeing an increase in counterfeits of our brands being offered for sale online so we have had to change our strategies to address this.

Barker: It has been mainly practical challenges, for example delays at local trade mark offices, together with a further shift to online infringements.

Is deepfake technology a problem in the consumer market – and do you expect it to be in the future?

Barker: We haven’t seen any evidence at this time that this is a problem. Social media seems to be pretty good at calling out deepfakes. However, as the tech improves, it’s something we’re mindful of.

What is the biggest factor to consider when evaluating possible IP expansion?

Prince: It is always key to evaluate how the IP is supporting the business. Assessing what is the objective for the IP – is it to secure enforceable IP or any potential defensive filing strategy?

What is unique to IP protection as discipline? How has it changed since the start of your career?

Prince: That IP can be valued in so many ways to the business and you can really add value to support the growth and objectives of a brand and business you work within.

Barker: I think IP has become a much more ‘mainstream’ legal topic which all in-house lawyers need to have a good understanding of to effectively advise their businesses. When I started out over 20 years ago, it was still seen in many quarters as something of an obscure specialism.

Butler: IP law is quite unique in the number of specialist areas and digitisation has only increased this. 

How can law firms improve the advice they provide?

Barker: Responsiveness. I need to know that my instruction has been received, its status and the timeframes for a response.  I’d say this is the single biggest differentiator. If I have to chase an external provider then they’ve failed the test.

Butler: Be upfront about fees. Most brand protection teams operate within tight budgets which are set at the beginning of the year with little room for manoeuvre so unexpected surprises when it comes to billing are never welcome.

Prince: Keep it simple and easily to digest, be consistent and clear with advice and don’t give long essays for advice emails.

Who has been the biggest inspiration of your career?

Barker: I would single out the late Paul Rawlinson, who was my mentor at Baker McKenzie.  Paul was an extremely gifted individual who held a number of very senior roles at the firm, including global managing partner, but always made time for people and was a genuinely warm, funny and sociable guy.  He is dearly missed.

Prince: My mother would be my inspiration, she believed strongly that education provided opportunities and also taught key strengths such as resilience and a strong work ethic.

What is your favourite book, blog or podcast on IP?

Butler: My favourite book on IP is The Billionaire’s Vinegar which was given to me by my old boss. It is about counterfeiting in the wine industry and is a truly epic tale.

The Anti-Counterfeiting World Law Summit takes place on 22 June. Click here to read the programme for this virtual event. For sponsorship enquiries email mariasunderland@globallegalpost.com and to enquire about delegate passes contact jasmindersoor@globallegalpost.com