Tackling the rise of the online counterfeiter 

By Marisa Broughton is a partner and trade mark attorney at European intellectual property firm, Withers & Rogers LLP

A report by Europol has found that there has been an increase in the sale of counterfeit goods online since the pandemic began. Unsurprisingly, criminals have made the most of increased demand for certain types of products, as well as the boost in online shopping. So, how can brand owners protect themselves from this increasingly common crime?

Goods such as personal protective equipment (PPE) and pharmaceuticals have been particularly targeted in recent months. With stocks of medical-grade equipment running low, an opportunity has been created for counterfeiters to take advantage of the desperate need for these important protective products.

This has been particularly concerning for legitimate medical brands, as anything related to health brings with it the risk of significant reputational damage, should something go wrong. Counterfeiters are potentially putting people in danger, making it even more vital that brand owners take action as soon as possible.

Everyday items such as personal hygiene and cleaning products have also been targeted, leading to sub-standard goods being sold to many households.

Online counterfeits can be hard for consumers to spot. Sometimes, the counterfeiters lift photographs directly from the original brand’s website, as well as using their trade marks. This deliberate act of deception means that consumers are unaware that they have ordered a fake until it arrives, which can then be too late to do anything about it. By contrast, brand owners can spot counterfeit goods online relatively easily, as they generally know where each product is being sold and by whom.

To protect products from counterfeiters, brand owners should ensure that designs and trade marks are registered prior to the manufacturing process. When considering intellectual property (IP) protection, it is wise to seek professional support, as experts can do the proper searches needed to legally and fully register a trade mark. This includes making sure that the mark is available and that the registration covers the right categories of use.

Many businesses have chosen to diversify in recent months, bringing new products to market for the first time. In the rush to react however, brand owners may have overlooked whether their existing trade marks cover their diversified product offering. If trade mark or design protection isn’t sought for the extended product line, this could leave an opening for competitors and counterfeiters.

Once fully registered, brand owners should monitor closely for infringement. This can be done through regular online searches, Google alerts or a commercial watching service that looks at Amazon, eBay and other e-commerce sites. No matter what method is chosen, it is vital that brand owners remain vigilant and act quickly if infringing activity is discovered.

The type of action taken depends on the severity of the infringement. Amazon and eBay have their own processes that can be followed to remove counterfeit goods, so this should be looked into first. Getting the products off the market is the most important thing, further action can follow.

If the infringement appears to be accidental, for example a small cosmetics company has a similar product name, then it may be preferable to take a more gentle approach. Aggressive cease and desist letters for example, could lead to public relations issues, with the letter being published online and used against the brand. A polite letter outlining the infringement and asking the business to change the name of its product, or remove it from the market, is often all that is needed.

However, if the infringement appears to be a result of organised crime, then a tougher stance is justified, particularly if it puts public health at risk. This could take the form of a strongly-worded cease and desist letter, setting out the action that the legitimate brand owner demands is taken and what will happen if they fail to comply, as well as injunctive relief. Unfortunately, it can be difficult to identify who is responsible for putting counterfeit goods on the market, so removing the goods should be the number one priority to protect both the brand and consumers.

The pandemic has created the perfect environment for online counterfeiters. Consumers have been forced to shop online considerably more than usual and demand for health and hygiene products has rocketed. To stop the market from being flooded with fake and potentially dangerous goods, brand owners need to watch for any infringement and act quickly should it be identified.