The law enforcement perspective
David Hunt from Camden Trading Standards gave a fascinating overview of the long Camden market's long history of counterfeit goods - where the fakes have become a tourist attraction in their own right.
David and his team has successfully implemented a new way of tackling counterfeit goods in co-operation with the Anti-Counterfeiting Group, police and major payment providers. New approaches to landlords who are being made to take greater responsibility for their markets (thanks to money laundering legislation) together with the Real Deal initiativehave been very helpful as well. Following successful prosecutions, Camden High Street is slowly changing and major brands are moving in to take over the previously counterfeit focused premises. Success by Trading Standards is very dependent on co-operation from brands both in terms of funding and intelligence. A more joined up approach from government would be preferable and ensure greater longevity.
A Scandi solution
Johanna Norborg Lilja fromVolvo had more positive news in her talk about how it is possible to make IP infringement into a profit centre (or at least not a loss).
Unsurprisingly, Volvo's primary enforcement focus is around product safety but areas such as counterfeit merchandise are still a problem and can damage the brand. Since the summer, Volvo has been trying a new approach in dealing with these low cost products. First, they carry out a test purchase of potentially counterfeit products sold by a seller and once it is confirmed as counterfeit, a Temporary Restraining Order (TRO) is filed against the seller's online accounts.
One counterfeit product is sufficient to obtain a TRO which can freeze all of the money in the account eg PayPal or Alipay. At this point usually the seller will make contact and it is possible to reach a negotiated solution but in many instances they do not make contact or a settlement is not possible. In these cases, after 21 days, if no response is filed, Volvo can apply for default judgment and get all of the money held in that account transferred it. The total time period taken is 3-5 months so it is not appropriate for items with safety concerns. However, it is good for low cost and non-safety related products.
To date, Volvo has not had an effective defence filed but this is a potential issue which could arise in the future and change the cost calculations.
Designs to the rescue?
Toward the end of the conference there was an interesting presentation fromSky Italia about the ways in which they protect the graphical user interface and the way in which this has been forced to change with the advent of the second screen. Designs were very useful together with copyright and the trusty trade mark. A combination of these rights is generally enough to deal with most GUI copies.
The academic perspective
The moderator on the second day, Carsten Ullrich from theUniversity of Luxembourg, gave a thought provoking and provocative talk about the ways in which intermediary liability have developed since the principles behind what became the eCommerce Directive was first debated back in the mid 1990s.
He pointed out that platforms have the data on the bad sellers and know the profile of listings which are likely to be selling fakes. It is time to change the legal framework and encourage platforms to take a more active role and accept a higher duty of care.
European tools
Nicole Semjevski from EU Observatoryon the infringement of IP rights (now part of EUIPO) reminded the room of the fantastic resource that the EUIPO has developed in the form of the Enforcement Database (EDB). The EDB is a platform where a rightholder can add information on their products including details of how to spot fakes and, importantly, who to contact if fake goods are seized. More sensitive information such as the tell tale signs of fakes can be restricted and only made available on request. The link with EUIPO makes everything a lot easier as it pulls data from TMView and DesignView this means that people in law enforcement (including local police and Europol) can immediately tell if there is a valid right. It is also possible to upload details of copyright and patents to the database - but this requires more active engagement from the brands.
Since the EDB was launched in 2013, it now works in 23 languages is linked in to customs and there are over 60 authorities on board and more than 28,000 trade marks represented.
Technical solutions
The various presentations regarding tracking and authenticating physical products were similar but with important variations. The key differences were summarised in the following slide.
Did you know there is a global standard to support brand protection? The GS1 global standard supports brand protection by using a range of standardised codes from barcodes and QR codes through to RFID chips. They try to cover off every stage in the process and are are of the importance of training and educating people in the standards - particularly in healthcare where counterfeit goods can have very serious consequences.
There were various practical implementations which were demonstrated in various presentations. They included:
AlpVision: the use of digital fingerprint technology (i.e. invisible patterns of micro indentations which are embedded into product packaging). This technology uses a smartphone to check if the product is genuine. It can be used on lots of materials at low production cost. Importantly, it doesn’t affect the production chain. Because the feature is invisible, counterfeiters are unaware of the feature so do not copy it. The micro indentations can be used together with QR codes so that consumers can check the product themselves.
Edding: the pen company has diversified into the use of digital ink on swing tags to detect if a product is legitimate or fake. Their design includes a directional marker so it is easy for the consumer, retailers and customs to authenticate products. It is possible to swipe in the opposite direction to get product information or special offers. Essentially there is a conductive layer which is added beneath the artwork.
Verisium: has a more high end solution for luxury goods. They have used their funding from Kaspersky Labs to develop a combination of blockchain and NFC chips. NFC is the method by which a contactless card or smartphone payment is able to work. It works with any smartphone but, unlike RFID chips, it requires very close proximity in order to work. The benefit of using the chips is that it enables the entire product life cycle to be tracked and that information shared with the consumer and the brand. For example, it can be used to demonstrate sustainability credentials and also to track second hand goods and enable effective recycling. The major downside is the relatively high cost, hence the focus on the luxury goods sector.
There were various exhibitors demonstrating their online counterfeiting solutions such as Yellow, Pointer and Red Points. A common theme across the platforms and the conference as a whole was the importance of combining the data led intelligence of platforms with traditional intelligence and evidence gathering. You can have the best platform in the world but if you haven’t got your IP portfolio in order, you are not going to get very far.
To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - rosie.burbidge@gunnercooke.com