Online Brand Protection

When establishing a new business, one of the aspects of the setup involves selecting the commercial name for the business and in some cases unique names for the products and services that the business is offering. Over time, these names may evolve into a brand that will be linked with the business reputation, services, and/or products, among other elements, and will define and distinguish the business from others. These names are important intellectual property assets and constitute the business’ trademarks.

Cybersquatting

One of the challenges related to the protection of trademarks in the digital age is cybersquatting. Cybersquatting refers to the practice of registering, trafficking, or using a domain name with the intent to profit from someone else’s trademark. In cybersquatting, individuals or entities register domain names that are similar and, often, identical to existing brands, business names, or trademarks of others, with the goal of either selling the domain back to the rightful owner at an inflated price or profiting from the confusion generated by the similarity between the domain and the legitimate trademark.

One of the ways to deal with this phenomenon is to institute some preemptive measures and check whether the domain that includes your trademark or business name is available and acquire it before starting commercial use of the trademark. In this context, it is important to remember that there are different top-level domains (TLDs) that play a role in categorizing and organizing websites, for example for different countries. It is usually a good practice to purchase the domains in all the relevant countries where commercial use of the trademark in the future is planned.

Different rulings in different countries help deal with situations where the domain was registered by a third party, whether in good faith or because of cybersquatting. In Israel, courts have made repeated rulings stating that if a company or individual makes a bad-faith acquisition of a domain name resembling an established business name, and subsequently obstructs the legitimate owner’s access by preventing customers, employees, or agents from reaching the business, property, or service, causing undue burden in bad faith and unfair circumstances, the court may order the transfer of the domain to the rightful trademark owner. In other cases, a domain name that was deceptively similar to a registered trademark was ruled by the court to infringe the registered trademark. There are also similar rulings by courts in many other countries. Thus, it follows that courts are generally unfavorable to cybersquatting and may, particularly where the registration and use of a domain by a third party acting in bad faith, order the transfer of the domain name to the rightful owner.

Online Counterfeiting

Another challenge related to the protection of trademarks in the digital age is online counterfeiting.  Online counterfeiting is an unauthorized reproduction or imitation of goods and products through digital means, to deceive consumers into believing they are purchasing genuine items. Counterfeit products are often designed to mimic the appearance, branding, and packaging of legitimate products while being of lower quality or even potentially harmful.

In the online context, counterfeiters take advantage of e-commerce platforms, social media, and other digital channels to market and sell their fake products. They may create fraudulent websites, use deceptive online advertising, or exploit online marketplaces to distribute counterfeit goods.

Online counterfeiting poses significant risks to consumers, legitimate businesses, and the economy. It can lead to financial losses for businesses, damage the reputation of genuine brands, and may, in extreme cases, be harmful to the consumer public. Efforts to combat online counterfeiting involve a combination of legal measures, technological solutions, and collaborative efforts between governments, law enforcement, and online platforms.

Trademark registration is a prerequisite to any action. Moreover, the registration should be in the relevant jurisdiction: if the counterfeit product is sold in an online store in a certain country, the trademark needs to be registered in such country to permit an action. Many online e-commerce platforms such as Amazon, eBay, or AliExpress, have dispute resolution procedures that are designed to deal with this and have, often, proven to be very effective. An example is that implemented within the framework of the ‘Amazon Brand Registry’, further discussed below.

Trademark Monitoring

One option for preventing online infringement is to continuously monitor for violators. Prima facie seems to be a task as simple as conducting an online Google search. However, it is not as simple as one would think. First, it may be a very tedious task to go over the results, many of them (at times most) being genuine (namely not counterfeit) products. Furthermore, such a search may fail to spot confusingly similar lookalikes, namely written differently but that can be perceived by the consumer to be the genuine trademark, whether in overall appearance or sound. For example, trademarks that are written with different lettering such as replacing C with a K, replacing X with EKS, replacing one vowel with another, etc. The task becomes even more complicated where the trademark includes a special lettering style (such as the style of letters used in the Coca-Cola or Molineux trademarks), where the trademark includes an image, etc. There may also be additional difficulties in finding trademarks that are in different languages, for example, trademarks used on counterfeit products that are transliterations of the original one.

This is where sophisticated trademark monitoring platforms and services come into play.     

Trademark monitoring services come in various forms, offering different features and levels of coverage. Some common types of trademark monitoring services include online search and monitoring. These services use advanced algorithms to monitor online sources such as websites, social media platforms, and e-commerce sites for potential trademark infringements. Another option is Marketplace Monitoring, for example, ‘Amazon Brand Registry’, for brand owners on Amazon who have online stores on there. ‘Amazon Brand Registry’ allows a brand owner to utilize features such as proprietary text and image search tools to find potential infringing content, and report and thereby remove counterfeit listings. To enroll in the ‘Amazon Brand Registry’, it is imperative to have a registered and active text-based or image-based trademark issued in the relevant country.

In addition, there are monitoring services that use advanced AI-based techniques that by image and logo recognition technology identify potential trademark infringements, even in situations where the text may not be explicitly used. Examples of such monitoring services are BrandShield, CompuMark, Corsearch, TrademarkNow, Thomson Reuters SAEGIS, Markify, and Trademark Alertz.

Enforcing Your Registered Trademark

Once an infringing trademark is identified, particularly where the online dispute resolution procedure is ineffective or not available, there are various legal avenues that can be resorted to, including obtaining court-sanctioned injunctions, using law-enforcement bodies (police, customs, authorities, etc.)  to cease counterfeit goods. It is always possible to try and initially send a cease-and-desist letter before any legal action, although experience shows that such letters are often ineffective (particularly in the case of bad-faith counterfeiters). Also, the need to rapidly stop the marketing and sale of counterfeit goods necessitates a fast move into legal action to seek an immediate injunction.

Regardless of the monitoring strategy, it is imperative to locate infringements upon your registered trademark and take necessary steps to halt their unauthorized use. Initiating such measures is essential for fortifying your brand, safeguarding against reputational dilution, and preserving the protective benefits obtained through trademark registration. For that reason, it’s important to consider the specific needs of the business, the industry, and the desired level of protection. Some businesses may opt for comprehensive monitoring services that cover various channels, while others may focus on specific areas based on their priorities and potential risks.

However, in order to have the ability to act effectively against infringers and get the full remedies available by law and/or by the various dispute resolution mechanisms, it is imperative to have a registered trademark.

*Erin Sherf is a trademark attorney at Cohn, de Vries Stadler & Co. (CDS-Luthi Group)

*All of the above does not constitute legal advice or a substitute for legal advice and all the information in the article is used as general information only. There is nothing in the said words to replace information provided by a lawyer, and the reader should contact and consult with a lawyer dealing in the field before taking any legal action of one kind or another.

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