At the frontier of tackling online counterfeits

30-04-2012

Xavier Hadad Rojas

At the frontier of tackling online counterfeits

The question of how to monitor and deal with online counterfeiting is a tricky one for brands and law enforcement agencies alike, as Xavier Rojas explains.

It is clear that there is no bigger issue in the intellectual property arena today than counterfeiting, a phenomenon that is seen both in the usual commercial channels and, of course, increasingly on the Internet, given the obvious benefits that new communication technologies provide.

The real problem here stems from the difficulty of finding the fastest and most adequate way to detect the differences between an original product and a fake one. If someone carefully studies the quality, texture and designs of trademarks, the details of products are unique and can be used as fingerprints to provide undisputed proof of identification. But translating all of these rules into protection from online piracy has turned out to be a difficult problem to legislate for and, above all, to stop.

The recent spread and diversity of counterfeit products, as well as their wide distribution, has increased the complexity of the problem, and the damage to IP owners. This is why efforts to raise consumer awareness through campaigns and other anti-counterfeiting and piracy activities must be urgently implemented.

IP specialists concur that it is necessary to establish clear and global rules which would determine the way to proceed in order to tackle this problem, but without policing the Internet and its contents. All of this translates into the conviction that any possible solution to confront IP piracy on the Internet must conform to existing legislation and to the reality of the legal use of the Internet.

“A RECENT STUDY... SHOWED THAT AN ESTIMATED 88 PERCENT OF THE MEXICAN POPULATION HAS ACQUIRED A PIRATED AND/OR COUNTERFEIT PRODUCT.”

This approach is complicated, however, because it is obvious that all the rights, duties and obligations of intellectual rights owners and of Internet users must be harmonised; this will require common-sense updates of all existing legislation, particularly the laws and regulations pertaining to Internet content, and the adaptation of IP rights to the business models on the Internet, without criminalising its use.

It is a matter of fact that in some countries most consumers accept and buy counterfeited items. For example, a recent study sponsored by the American Chamber of Commerce of Mexico showed that an estimated 88 percent of the Mexican population has acquired, at least once, a pirated and/or counterfeited product.

People involved in counterfeiting usually regard their activities as a business and they are willing to devote their resources to it only as long as they perceive that their investment is going to be, to a certain degree, profitable and relatively risk-free.

In light of the above, the principal objective, as well as the legal means to tackle this problem, will depend on the specific nature of each online product. Legal advice from IP attorneys may suggest practical measures to tackle IP rights violations.

In addition to specialist advice, there are several actions available that should be taken when planning a cost-effective strategy to enforce and protect IP rights. Brand owners should:

  • Identify the illegal use of the brand or copyright;
     
  • Be alert for potential brand infringements in websites;
     
  • Monitor the selling of pirate products inside auction sites;
     
  • Monitor trademark abuse in online contents;
     
  • Prevent phishing attacks growing into huge campaigns;
     
  • Detect websites which falsely claim to be authorised or affiliated with a trademark; and
     
  • Stop typosquatters from using registered trademarks in their domain names.

These actions will help the IP attorneys in their quest to combat counterfeiting, by obtaining a considerable amount of information on counterfeit activity that can be prioritised to highlight the most prolific offenders.

Although there are different ways to monitor the existence of counterfeit products available online, the real problem is that the Internet is still a frontier, in that laws that govern it are still being created and refined. In an ideal scenario, there should be laws (and the legal authority to enforce them) regulating this phenomenon and providing clear and uncontested legal actions that give IP attorneys the necessary legal grounds to combat and tackle it.

Online piracy constitutes a major problem not only for IP rights owners but for the consumers who acquire the pirated goods.

Xavier Hadad Rojas is an associate of Uhthoff, Gomez Vega & Uhthoff. He can be contacted at: xhadad@uhthoff.com.mx

This article was first published on 01 May 2012 in World IP Review

anti-counterfeiting, online piracy, cybersquatting, trademark infringement, Internet

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