How does brand protection work in practice?
The Second Brand Protection Congress in Frankfurt was a very interesting event with a wide range of speakers and topics all linked to brand protection. The talks ranged from the various online anti-counterfeiting tools and latest technological developments and intermediary liability through to the various methods that brands have adopted to protect their rights. There were far too many issues discussed for me to go into the detail they deserve but these blogs will cover off the points which I found most interesting (and I hope will be of the most interest to IPKat readers).
The industry perspective
The dangers associated with counterfeits and illicit trade were highlighted in David Luna’s opening keynote. Oliver Fein went on to note that there is a tendency for business teams such as brand protection, security, IT security, IP and trade marks to work in very separate universes. He urged them to work together. Ken Bonefeld-Nielsen used a ball of wool and a funnel to highlight the importance of planning and prioritisation in crisis management. He reminded everyone that you have plenty of time before a crisis and none when one erupts. Get a standard operating procedure in place now! The key is clear communication in a timely manner. Whilst it may not be the brand’s legal responsibility for damage resulting from brand counterfeits, the brand name is in the news and it is an opportunity to present a positive solution for the public. Ekaterina Makarova of Sberbank gave us a sneak peak into its cyber squatting problems. The most memorable copycatwas a purported airline (an unusual second line of business for a bank) which mimicked the bank's branding colours, website layout and overall appearance. These issues are being successfully litigated via the Russian courts. Magdalena Kaput of Oriflame Cosmetics discussed the Protection of image rights. This is particular issue under their direct sales model where social media engagement and photos of Oriflame events are an important part of their business. As Magdalena explained in the world of post GDPR it is important to understand context and consent before using an image. Getting this wrong can create major reputational harm and a large liability under GDPR. Magdalena highlighted a particular feature of celebrity and model contracts which needs to change - whilst they can be very long regarding location timing, lighting, hair and makeup to be used they do not tend to include specific consent to use of the image. This is a major omission which will need to be resolved in model/celebrity contracts to avoid problems in the future. Jan de Visser of Philips' brand protection team explained the background to Philips' move into healthcare together with the divestment of its electronics name and many of its white goods and electronics products (which are now sold under licence). A particular complaint concerned the absence of data on sellers so it is not possible for brand owners to determine whether the goods are being sold by authorised resellers or not. During questions, an audience member gave the platform perspective and pointed out that not all platforms are created in the same way. She highlighted that not every platform knows the precise origin of the goods sold on the site and whilst the data may technically be available, big data doesn’t equal knowledge. She also noted that brand owners often refuse to do the test purchase so it is impossible for the platform to verify whether or not the goods are counterfeit. The impact of the track and trace legislation for cigarettes was discussed by Alexandra Munch of Philip Morris International. This means that it is now possible to see the full product route from factory to store. She also noted that the move to e-cigarettes means that big tobacco is starting to worry more about online sales.