Fashion, medicines, toys, food and digital devices are only some of the categories affected by this widespread disease, having consequences on several aspects of society. First of all, it is certainly a damage for consumers and, in some cases, a danger for their health; then, it comprises a threat for the economy as it changes the normal market functioning; even more, counterfeiting is often backed by criminal organizations whose illicit actions are therefore further nourished.
What is it
It is considered “infringement” the act of a subject using a trademark which is identical or mistakable with another one, in order to identify the same or similar products or services.
Even if the latter are completely different, it is still possible to establish a violation when talking about well-known trademarks.
On the contrary, it is not considered an infringement to use another subject’s trademark just to describe a product or service. However, associations exploiting another trademark’s reputation or values in order to promote a product are not allowed, as they catch the consumer’s attention to the detriment of the right owner.
The development
Counterfeiting was once typical of luxury goods, while it is today widespread in all sectors. If in the past the consumer willing to express a social status with certain products but not being able to afford them, used to go for fakes, nowadays in the great deal of online platforms, he/she lives the constant illusion to potentially buy anything, while the counterfeiter has become so expert to easily sell any product nearly at the original price.
Moreover, there has been a change also in the sales channels: if in people’s minds up until a few years ago counterfeit products were put on sale only in markets and stalls, now fakes are all over the Internet and deceitfully hide behind any link, while taking advantage of a pretended anonymity, a better visibility and a faster purchase method.
What happens online
The poor consumer in a daze will have to get by on link after link looking for certainties, reassurances and proofs that the product carefully selected is original.
With regards to the online world, the brand eager to protected itself can initiate specific monitoring programs, both on marketplaces – the more or less known platforms where you can buy any kind of product with a simple click – and on social media, that is to say those ecosystems of pictures and comments feeding themselves with likes and representing by now a growing market share. On these channels it is possible to react and remove the infringing contents based on registered rights.
In particular, it is called cybersquatting or domain squatting the illicit activity of registering domain names corresponding to other subject’s trademarks or famous people’s names taking over them for profit purposes, in view of transferring the domain or diverting consumers. If this happens, it is possible to tackle this phenomenon and recover the domain name illicitly registered with a special administrative procedure called UDRP (Uniform Domain Name Dispute Resolution Policy), representing the most appropriate protection tool to solve these kind of infringements.
Of course, the violation reach depends on several factors, such as name combinations, logos, product types and geographical areas where the goods are marketed.
Tools for action
In an age when reputation is key and fundamental to success, brand protection activities are very important to avoid running such risks and they start with a simple monitoring of all trademark-related words, in order to proceed later on with further actions on a case-by-case basis.
Trademark surveillance service allows to be immediately informed when somebody tries to register an identical or similar trademark. The easier, quicker and cheaper action to be taken in this circumstance is to file an opposition to the registration, by notifying the Trademark Office not to grant the requested trademark because similar to a previous one.
Once the infringement is confirmed, there are several feasible ways to go for: from sending a cease and desist letter to the alleged counterfeiter to initiating a legal action, but of course timings will vary in relation to the selected approach. It is important to react in a coordinated way on a global scale, so seeking support from expert consultants in anticounterfeiting strategies with a solid network of colleagues abroad is fundamental to conduct accurate investigations, deal with possible language difficulties and cope with specific aspects related to culture and peculiarities of national legal systems.
Moreover, the owner of a trademark subject to violation can also request some stronger measures with more tangible effects in cases in which it is necessary to urgently stop the infringer’s illicit conduct: these are the description procedure, the court injunction or the seizure action.
Another suitable tool to protect a trademark is to activate the customs surveillance service. In Italy, it is possible to suspend the importation and exportation of supposedly counterfeit goods at all customs, once the officials have been provided with the useful details to distinguish fake from original products.
Anyways, there’s only one best way to protect a trademark successfully: better safe than sorry or, otherwise, done is better than perfect.
