Trade Mark Conference 2015: Hot topics facing brand owners online

The roll-out of new generic top-level domains (gTLDs), opportunistic domain name registrants and disgruntled customers are the main concerns facing brand owners online, an industry conference has heard.

Speaking at the Trade Mark Conference 2015, hosted by Thomson Reuters and legal publisher Sweet & Maxwell in London, a panel of brand owners, lawyers and brand protection specialists were describing some of the best strategies for monitoring trademarks online.

One speaker said that the roll-out of new gTLDs, including the .sucks domain, has caused concern about what monitoring steps to take and whether the company she works for should register a .sucks domain given its high price.

The .sucks gTLD, managed by registry Vox Populi, has caused controversy. It has a wholesale price of $1,999 but a recommended retail price of $2,499.  

There is also a threat posed by individuals who register domain names matching brands and what approach should be taken to retrieve websites, the speaker said.

“Once an online infringement has been detected you need to be mindful of your approach. If you are too aggressive or heavy handed you could attract unwarranted attention and be labelled as the bully enforcing its brand,” the speaker said.

Customers could also have a role to play, said one speaker, referencing luxury fashion brand Karen Millen’s recent introduction of a new programme called Join Our Fight aimed at getting loyal customers to help in the fight against counterfeits.

Aside from the roll-out of new gTLDs, one speaker said that “most counterfeiters” still opt to run a website from a .com domain because it’s cheaper and easier to register.

Special mention was also given to Chinese e-commerce company Alibaba Group and its platforms Tmall and Taobao, which have implemented new programmes aimed at stamping out counterfeiters.

But, it was alleged, given that online shopping site Tmall receives 137 million visitors per day, there are a lot of counterfeiters to tackle.

Alibaba has recently introduced new measures for tackling infringement online and also signed a memorandum of understanding with Microsoft as part of an effort to remove counterfeit Microsoft products from its sites.

The panel also spoke about the English High Court’s judgment in a counterfeiting case filed by jewellery company Richemont against the UK’s main internet service providers (ISPs) (Cartier International and Others v BSkyB and others).

Benet Brandreth, a barrister at 11 South Square in London, said the judgment, handed down in October last year, was flexible in that it required ISPs to treat website blocking as a “cost of doing business”.