The obligation of brand owners to police the marketplace for unauthorized uses of their trademarks is of paramount importance, given the proliferation of counterfeit products on social media and e-commerce platforms. This GT Advisory summarizes some considerations for companies combatting counterfeit products on those platforms.
Registering Crucial Intellectual Property in Key Jurisdictions
Some platforms require a brand owner to own a trademark or copyright registration before they remove counterfeit products. Although e-commerce is borderless, some platforms also require brand owners to own registrations in the specific country or territory where they want the counterfeit products removed. Brand owners should consider working with counsel to align on (i) what intellectual property might be the subject of counterfeits (or has been the subject of counterfeits) and (ii) the key jurisdictions where the brand does the most business and/or is seeing the most counterfeits.
In particular, brand owners should consider registering their product packaging as a trademark, and registering their copyrights in the packaging, as many counterfeiters have graduated from reproducing words, marks, and logos on products to using AI tools that reproduce brands’ distinctive packaging but place different brand names on marks on the packaging. Consumers then see the brand owner’s distinctive packaging — which is what captures their interest — and may be deceived into thinking the brand owner’s product is inside the packaging.
Monitoring the Marketplace
In the generative-AI era, there are some sophisticated and effective vendors that use AI tools to monitor the marketplace for counterfeits. Brand owners might also create alerts for their brand names and marks, as well as subscribe to “watch” reports, which will identify trademark applications filed in key jurisdictions that may be for counterfeit versions of the brand owner’s marks.
Coordinating Enforcement
Brands should consider coordinating their enforcement efforts against counterfeiters across all jurisdictions. Brands might begin by submitting takedown requests to platforms. Depending on the scale of the counterfeiting, brands may file lawsuits against one or more counterfeiters and seek a temporary restraining order against the continued sale of the counterfeit products and, in certain cases, get an order that freezes — and potentially seizes — the counterfeiter’s bank account(s). Brand owners should also consider registering their intellectual property with customs agencies around the world, which may help prevent the counterfeits’ importation.
Educating Consumers
Brand owners might consider utilizing their social-media platforms to educate consumers about the differences between genuine and counterfeit products. This may help ensure that consumers purchase genuine products and have the experience with the brand they have come to expect.