Retail team member Sarah Neil reviews the problem of online trade mark infringement and the options for combating third party copycats online 

You may have seen the recent story of Little Soap Co and its battle against a scammer who set up an Instagram account cloning the company’s genuine Instagram account in an effort to fraudulently obtain money from Little Soap Co’s customers. The problem of fraudulent activity online is rife and businesses of all sizes and repute face an ongoing battle against third parties copying their branding online.

So what can be done to stop this kind of activity? Unfortunately, scammers will always exist online. It is both cheap and easy for scammers to produce copycat websites and social media pages which can be used as instruments of fraud. Whilst it might not be possible to avoid your brand falling victim to such activity, there are things you can do to have fraudulent pages removed and IP is a key weapon at your disposal for this purpose.

Social Media

The good news is that most social media platforms have an online complaints procedure which allows you to request that any page infringing your IP is taken down. These online forms are a quick and efficient way to complain about fraudulent social media pages which use your trade marks and hold themselves out as being related to your business.

Owning trade mark registrations for your various trade marks will make the takedown process more straightforward. You should therefore ensure you have filed trade mark applications for all of your core brands. You should also consider protection for any hashtags which have been used in marketing campaigns and are particularly important to your business, although it should be noted that it can be difficult to obtain protection for this kind of mark in some countries. You will need to be prepared to set out the basis of your claim of trade mark infringement and you should discuss the matter with your IP lawyer to ensure a takedown notice is the right course of action.

Copyright may also be a relevant right to the extent that fraudsters are not just using your trade marks, but have sought to replicate your pages and online identity. It is important to consider what rights have been infringed and to be able to substantiate these in any takedown and, so, it pays to be prepared. Being able to identify which employee or consultant designed a webpage and being able to point to the relevant contractual or legal provisions can assist.

Domain name registrations

Domain names can be obtained quickly and easily for a very low price. Domain names which make use of third party trade marks are an easy way for fraudsters to divert genuine business, or to try and obtain money from the rights holder. It is not uncommon for brand owners to come across domain names which make a small alteration to the genuine domain, for example a common misspelling or the addition of descriptive words. There are so many variations available to register, it is practically impossible to stop them all by pre-emptively registering them, and it would be undesirable for most companies to have to maintain a huge portfolio of domains in order to preclude fraudsters.

A targeted system of monitoring new domain name registrations and taking action where necessary is recommended. There are companies who offer watch services and can report new domain name registrations including your trade mark. Such a watch should be combined with a focused strategy for taking action against domains which resolve to concerning websites, this could be websites holding themselves out as associated with your brand, or websites offering suspected counterfeit or competitor goods. Options to take action against such activity include cease and desist letters or formal domain name complaints. For the most concerning activity, trade mark infringement proceedings might also be an option.

Website blocking orders may also be of interest to some companies where websites which infringe upon their rights are often re-directed to from new domain names. These sorts of orders require the Internet Service Providers (ISPs) to block users from being able to access the websites in the jurisdiction and they are known to be somewhat flexible in being able to be extended to new domain names showing the objectionable content. This solution may only be appropriate in the worst cases since there will be legal fees and court costs and there may be a cost associated with the ISPs taking such action.

Be proactive

You should take a proactive approach to identifying and defending against scammers using your brand online. Here are just a few steps you can take to put your business in a strong position against online infringement:

  • Ensure your IP is identified and, where appropriate, registered so that you can produce details of your rights to support requests to have infringing social media pages and websites taken down.
  • Monitor online activity. For smaller companies, this can be carried out in house by an employee who should regularly conduct checks of the Internet. This includes searches of social media, e-commerce websites such as Amazon and general searches for your brands using search engines like Google. Any activity which is located can be discussed with your IP lawyer. For larger companies, it might be more appropriate to talk to your IP lawyer about setting up a formal watch service such as a domain name watch (which looks for new domain name registrations) or a web watch (which looks for online activity).
  • Have a policy to deal with infringement. It will never be possible to stop all third party activity which makes use of your brand. You should therefore carefully consider the kind of activity which is of concern to you and formalise a policy for dealing with that activity. Your policy should cover domains and social media accounts you are going to register yourself to cover your core brands as well as detailing how to react to different types of online activity. The policy should be realistic about the options available to you and the value of taking action. Where the activity has little to no commercial impact on your business, it may be best to simply monitor the activity rather than incurring the cost of a cease and desist letter or other more formal action.