Tahir's Tips: Protecting the Web, Apps and E-Commerce

It’s all about digital; from Burberry to Prada, a strong online presence is now a key factor in brand success. Online retail sales are growing at a steady rate and the recipe to success is to have a multi-channel marketing strategy in place.

With this increased emphasis on online trade there is also a greater need for fashion brands to be vigilant in protecting their business online. The online world can create difficult issues for fashion brands and if not tackled effectively can be extremely harmful.

We have been involved in many online anti-counterfeiting campaigns and have noted that not doing anything about online brand issues can result in a direct negative effect on the brand’s bottom line profits through loss of sales and damage to the brand’s reputation.

Most online issues for fashion brands will revolve around the misuse of intellectual property rights. Common online and mobile intellectual property problems for fashion brands include:

1. Third party sites selling fake products.

2. Third party sites misusing a brand’s trademark or copyright.

3. Third parties registering domain names or social media tags which feature a brand name or trademark.

4. Fake products being sold on e-commerce and m-commerce platforms or social media websites.

5. Third parties pretending to be a brand on a website or social media.

6. Malicious mobile applications that use a brand’s intellectual property.

Luckily for brand owners there is a growing arsenal available to fight unscrupulous online infringers. So here are the top seven tips to protect your brand online in the most cost effective way;

Takedown letter to Internet Service Provider (“ISP”) or website host:

A quick and effective way of tackling a rogue website that misuses a brand’s copyright is to send a request to the ISP or website host asking that they remove the offending material. In many territories once an ISP or website host is notified of an infringement, it is required to remove the infringing content or become liable for the content itself.

Payment disruption: 

Online payment providers (PayPal and Visa) often have policies in place that preclude users from selling goods that infringe on third party intellectual property rights. This has an immediate impact on an infringer’s website. This would be relevant for example where a website was found selling fake goods.

eBay, veRo and marketplace programmes:

Online marketplaces are a notorious hotbed for infringers. However, the larger marketplaces (eBay, Alibaba, TaoTao, Amazon) have automated takedown procedures in place for rights holders to report infringing listings or fake goods. These procedures are user friendly, easy to set up and cost effective.  

Search engine delist:

Search engines will delist infringing material from their search engines. This makes it harder for people to find the material in the first place. This can be implemented through a series of online forms and e.g. with Google, via a Google email account. It is another cheap and quick way of disrupting infringer’s activities.

Domain complaints:

If a domain name is found to be misusing a brand then there are administrative measures which can be taken called domain name complaint proceedings. These can result in the transfer of the domain name to the complainant. A brand owner should have domain name watching services in place whereby it is notified of domain names that are registered which contain the brand.

Malicious apps:

These can be dealt with via Google and Apple’s online content disputes procedures. These involve filling out an online form with details of the infringement, the brand owners rights and address and so forth. The owner of the app is contacted about the infringement and asked to resolve the issue.

Letter before action and legal proceedings:

Lastly the most traditional way of tackling infringements is to write a formal cease and desist letter. If a website can be linked to a specific individual or corporate entity, then instruct a lawyer and sending a cease and desist letter, seeking undertakings (a signed agreement that they will not infringe in future and pay legal costs etc.) can be one approach. If signed undertakings can be obtained from an infringer then the undertakings can be enforced against the infringer for future infringements. You may also be able to recover legal costs and compensation.

However, it should be noted that legal proceedings are costly and so should only be used against the very worst infringers (although if an infringer is based in the UK then the small claims track at the IP Enterprise Court is a cost effective place for taking out proceedings).

In conclusion, securing the fashion brands trademarks and domains and social media tags in the first instance is the best way to prevent on-going issues (prevention is better than cure!).  Then having an effective and cost effective anti-counterfeiting programme (like our Ninja counterfeit programme) keeps the online coast clear.

For more information on Industry member, Tahir visit his personal partner page on the Sheridans website. To contact him directly, visit The Industry Directory, email [email protected] or telephone 020 7079 0103.