16 Aug 2020

COVID-19 and the impact on Trade Marks

Challenging brand abuse will help control space online, says Claire Jones of HGF.

Light And Dark Studio

The novel coronavirus, COVID-19 has had an unprecedented and dramatic impact on people and businesses internationally. The measures that have been put in place to contain the spread of the virus are the most significant restrictions since World War Two, with the economic outlook is not promising, with a number of well-known retailers warning of cuts and closures.  

Business impact

Many Registries around the world have adopted exceptional measures in light of the crisis, suspending or extending a number of deadlines.  Although these are returning to normal over recent weeks, physical offices generally remain closed, with services available online/electronically only.  An up to date list of the current position in each territory can be found on the HGF COVID-19 Support Platform, which also provides useful resources relating to intellectual property.
Many companies and businesses are remote working and implementing business continuity plans to remain fully operational and over the last few months have settled into more of a ‘normal’ routine.

Online Business/Counterfeiting

With lockdown provisions across many countries, there has been much more of a move to online retailing and shopping, which increases the risk of counterfeits, not only from companies looking to take advantage and copy designs, but from consumers with reduced budgets.The Anti-Counterfeiting Group (“ACG”) has recently launched its Annual Report (see link here) and warns that there has been an increased risk of substandard and dangerous fakes available online.  

Brand owners should not cut back on online protection strategies and should look to review the current position to ensure that they are fit for purpose. Many of the large online sales platforms, such as Amazon and eBay will have brand registries and if not already enrolled, registration should be actioned so that counterfeit or infringing items offered for sale can be removed quickly and easily.

There will always be those that take the pandemic as an opportunity - there are a number of counterfeits and scams operating, including fake websites, price gouging, phishing, fake invoices requesting payment, protection policies and more.  Companies should be particularly vigilant of the promotion and reputation of their own brands online and ensure that monitoring is front and centre of any IP protection policy.

Seller information on Amazon

Amazon has confirmed that later this year, they will publicly list the names and address of (US-based) third party sellers on Marketplace.  This will be a welcome change for those seeking to take action against counterfeiters and hopefully will be launched on the site in other territories as well.

Devising a strategy

IP assets are an integral part of a business, and although the pandemic may impact IP strategies, it is, now more important than ever to ensure that your strategy takes into account the new circumstances and that companies are flexible and can adapt as new opportunities arise.  Not protecting brands or expanding brand protection , or dealing with issues even in these unusual times could cause problems further down the line with enforcement and validity of brands.

Educate consumers on what is genuine and what is not.  Set up avenues on social media for consumers to report suspicious or counterfeit items.   Advise them when discount sales and special offers will be held and how they can determine whether a product or site is real or related to the brand, especially when using third party selling platforms. 

 The consumer can help to be a brand’s eyes online and help to build a pattern of where and what the main issues seen by consumers are.
Watching services including in relation to domain names and on-line counterfeits should be stepped up to ensure that opportunistic applications are not being filed linking a brand with Covid-19 terms or other opportunistic activities which undermine the rights in the brand.  Vigilance should be maintained in relation to third party filings and in a timely fashion, as well as continued monitoring and actioning of infringements and dilution.    

Portfolios should be reviewed to ensure that coverage is fit for purpose.  With companies producing new products, online sales potentially reaching new territories, and companies moving online, a review will ensure that the goods and services being offered are still covered by existing protection.  Where required, new applications can be filed to cover any new goods or services.   For example, a restaurant may well have a trade mark for ‘restaurant services’, but the existing protection would not necessarily cover ‘takeaway food services’ or ‘delivery services’.  

Regular reviews of IP portfolios and discussions with specialist IP advisors to address issues arising from these unusual times will go some way to reducing the impact of the pandemic and ensure that the portfolio remains robust and in good shape.  

With the move from more traditional ‘bricks and mortar’ to online shopping experiences,  the protection of brands and consumers online is more critical then ever and challenging brand abuse will help to control space online.

Claire Jones is a senior Trade Mark Attorney at HGF

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