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The Winning IP Strategy Blog

2017_09-06_patent-centric-brand-protection

Strengthening Brand Protection at Patent-Centric Firms

The world of global ecommerce is constantly evolving, with exponential growth led by China. As millions of buyers migrate online there are new opportunities for consumers to discover and embrace well-designed branded products. Yet the technological developments that have made online shopping so easy have made online brand protection quite hard. It is easier than ever for individuals who create or distribute counterfeit goods to distribute their wares on marketplaces, search engines, websites and social media to unsuspecting consumers – or those seeking the cheap “knockoff.”

Why brand protection efforts benefit from patents

A patent is one of several effective methods to protect your intellectual property. There are two main types of patents –  utility patents and design patents. A utility patent protects the way in which a product, composition, system or process is created or functions, and in the US is good for 20 years from its earliest priority date. In contrast, a design patent protects the way a product looks and appears, and in the US is valid for 14 years from its earliest priority date.

For example, suppose a new brand of wireless gear is developed – a headset/microphone to adhere on the backside of a person’s ear. This product might work by stimulating the small bones of the wearer’s ear when a message is received such that the wearer can hear the other person’s message in his or her ear. When the wearer is ready to transmit a message, the headpiece senses the vibrations on the person’s jawbone as he or she talks and thereby is able to transmit a coherent message.

A utility patent would use words, supported by pictures, to protect the manner in which the headpiece functions. A design patent would use images, supported by very few words, to protect the ornamental nature of the headpiece, as it appears to the average observer. Further, a trademark would protect the name, slogan, tagline or style (trade dress) of packaging; a copyright would protect an image on the package, a video clip, a jingle in an ad or code on a website.

Patents, when combined with trademarks and copyrights, can help provide significant brand protection for your business’s intellectual property. Altogether, they create a “triple whammy” that web platform operators must respect. And the more global the platform, the more brand protection you can get from diverse intellectual property portfolios, even if all items are not filed in the same country. Why? The platforms value IP too. It makes the world go ‘round.

What happens when infringement or counterfeiting is suspected?

When you and your brand discover a risk that another party is attempting to sell an infringing product, look to your IP portfolio and places to enforce to best construct options to stop them.

When design patents are part of the mix, you are able to present with a simple picture:

  • a counterfeit complaint
  • an allegation of IP infringement
  • a way for a non-English-speaking decision-maker to side with you

Another powerful benefit of using patents is that you have options to complain:

  • to the web platform
  • to a regional patent office (depending where the patent was filed)
  • to a court
  • to customs
  • to a payment processor

While patents present many mechanisms to repeatedly attack counterfeiting from the brand protection point of view, it unfortunately will take repeated complaints/attacks with your patents and other IP to bury counterfeiters online and discourage them enough to seek some other brand to victimize.

Ultimately counterfeiters may soon return online with a newer product variation that infringes your brand in a new way. For repeat counterfeiters and willful infringers you will need to bring legal action, thus requiring the need for greater evidence. In these cases, test purchases can be used. A test purchase is typically conducted by a third party to collect, photograph and document sales in territories covered by your IP. The facts gathered help create a “packaged” case for law enforcement authorities, which often need to be involved to halt committed counterfeiters.

With test purchasing evidence bolstering your assertions, you can be additionally confident in making careful allegations of patent infringement. By embracing targeted legal action as part of your downstream brand protection strategy, you can escalate results by seeing the counterfeiter’s place of business being raided, having infringing products and/or illegal goods seized, and ensuring monetary damages and penalties are assessed against the counterfeiter(s). In other words, counterfeiting criminals can be put out of business and incarcerated for infringing on your valid and enforceable intellectual property.

Staying ahead of counterfeiters and using all your IP for brand protection

Counterfeiters are a resourceful bunch that are constantly innovating, just like seasoned product developers. There are many classic and emerging techniques to manufacture and sell cheap goods to consumers that a) do not recognize counterfeits easily or b) who willingly seek out replicas in search of the “look” of a name-brand product at a fraction of the cost (hence the importance of companies obtaining design patents along with other forms of intellectual property protection).

As counterfeiters are prohibited or blocked from selling on one e-commerce platform, they will likely attempt to sell their products on another e-commerce platform or sell under a different name. Or, they may change their user name, shipping location or other identifiers in a way that enables them resurface quickly – often the same day as a takedown. This means that brands must always be alert for counterfeit goods and take proactive measures to prevent them from being sold. Registering one’s patents and trademarks with e-commerce platforms such as Amazon, Alibaba, eBay, Taobao, Jet, DHGate and others can also help these platforms proactively locate counterfeit products being sold on their sites. Most importantly, a mix of patent and trademark complaints against a potential counterfeiter will be taken more seriously than either complaint alone.

However, the task of discovering patent-infringing counterfeit products and protecting your brand from the harmful effects of counterfeiting ultimately falls to you and your business. Anti-counterfeiting services from Perception Partners can monitor reputational and revenue risks on the Internet for you, capturing counterfeit items and pinpointing (or marginalizing) individuals or entities engaging in activities that infringe on your intellectual property rights. This can help you focus on not just brand protection but also on pursuing legal remedies against infringers. Schedule a trial of our Replicatch anti-counterfeiting software and let your brand experience the difference that our relationships and results can deliver for you. Call Perception Partners today at (404) 523-5990, or contact us online to get back to doing what you do best for your brand.

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