• Study suggests new approaches to online enforcement
  • Argues that broad agreement already exists internationally
  • INTA voices support for study and efforts to harmonise laws

A major new study of approaches to online trademark infringement has highlighted significant limitations in prevailing responses to the issue. Underscoring the manifold difficulties of tackling counterfeiting in a borderless online environment, it argues that only a more harmonised approach, based on consistent legal and technical standards, can make significant headway against the problem.

The report, produced by former INTA president Frederick Mostert on behalf of the World Intellectual Property Organisation (WIPO), was recently presented to the body’s member states in Geneva. It takes a detailed look into current remedies to the fast-growing problem, which now accounts for hundreds of billions of US dollars worldwide, identifies existing barriers to effective enforcement and suggests new approaches.

The study frames online infringement as a global problem which requires a global response; if the internet has no borders, then online trademark enforcement must transcend national boundaries too. It argues that the need for a transnational approach is made more acute by the myriad other challenges brand owners face while seeking to uphold their rights: the anonymity of infringers, the speed and volume of sales, and the increasing complexity of the nexus of web-shops, e-commerce platforms and social media in which counterfeiters operate.

Despite the civil, administrative and criminal remedies available in many jurisdictions, the report contends, current measures for enforcing trademarks online are ineffective. This is because “there has been little success in creating an international framework dealing with the recognition and enforcement of IP disputes. Existing multilateral treaties, such as the TRIPS Agreement, fail to cover cross-border recognition and enforcement of judgements. No harmonized standard exists.” The paper draws particular attention to the problems this causes for brand owners seeking injunctions against infringers or online platforms: “Even if a rights holder secures a favourable judgement in one jurisdiction, they may not have an easy way to enforce these rights in a foreign jurisdiction, which will cause delay and costs”. Moreover, the process of obtaining international arrest and evidence warrants is regarded as too long-winded to be effective against online counterfeiters.

So what is the solution? The study suggests more meaningful forms of international cooperation, based on the recognition of common technical and legal standards. “While formal harmonization of legal standards would be procedurally challenging, it is suggested that this framework could take the form of a set of non-binding ‘voluntary guidelines’ to facilitate the quick and efficient implementation among member states in today’s fast moving digital environment.”

While it may – at first glance – seem an impossible task to achieve such cooperation, the report argues that broad agreement on some basic principles already exists, and that this could provide the bedrock for greater transnational collaboration. On the crucial question of intermediary liability, for instance, it notes that “a ‘ratio’ of common principles have emerged” that could form the basis of a consistent but flexible approach across borders.

Elsewhere, the report tackles some of the other tricky issues surrounding online infringement, such as who should bear the costs of enforcement – rights holders or intermediaries. Asserting that neither trademark holders nor online service providers should shirk the burden of tackling infringement, it recommends a division of costs according to who has the greatest competence and ability to perform particular enforcement tasks. Mostert is particularly concerned that the expenses imposed on rights holders should not be so great as to deny SMEs a means of upholding their marks. Because of the “lightning speed” at which the cyber world changes, he also suggests that relative cost burdens should be determined on a case-by-case basis, depending on the specific context of a dispute.

That infringement is a growing threat, is a resources and budget drain, and that the current system is not working will come as no surprise to those toiling every day against illicit trade online. However, the study is important in that it considers the issue through a wide lens, provides a thoughtful assessment of possible ways forward and – crucially – should result in further debate (and hopefully positive action) on the issue.

To that end, INTA has welcomed the study and endorsed some its key arguments. “We commend WIPO for taking the initiative to request a study that evaluates and addresses ongoing infringement” CEO Etienne Sanz de Acedo told World Trademark Review: “We share the conclusions of the report that existing international cooperation mechanisms have proven inefficient in preventing cross-border online infringements, which are known for being numerous, high-speed and anonymous. INTA supports any endeavour to improve online enforcement of trademark rights through harmonization of laws.”

Mostert’s report has an influential audience. With the threat growing and evolving, the hope is that this leads to more meaningful engagement on an issue that continues to frustrate brand owners of all sizes and budgets.