Is your house in order? Brand protection in the online retail space

More than just an attractive logo or clever turn of phrase, a brand, although intangible, is a valuable asset which is worthy of protection.  This particularly applies in the online market where a brand’s online image is its key marketing tool.

How to protect your brand?

Register your rights where you can. Where rights cannot be registered – for example, copyright and unregistered design right – then best practice dictates that a business should keep detailed records of a work’s creation to prove independent creation if necessary.

The following intellectual property (and associated) rights should all be considered:

Trade marks: A trade mark registration is obtained on a territorial right basis by reference to a specific description of goods and/or services (broken down into identified classes). This needs careful drafting to ensure that the businesses’ key products/offerings are protected and any feasible expansion plans are provided for.

Copyright: In the UK copyright is not registerable but comes into existence when a relevant work is created; for example, images or text displayed on a website. Ideally, the copyright in any work created by someone outside of the organisation should be assigned to the business so that it has unfettered control of its use.

Domain names and social media: In addition to securing the brand name it may also be prudent – if financially viable – to obtain domain names incorporating any obvious misspellings.

It is similarly advisable to secure any social media handles, even if the business does not intend to use them, to prevent third parties from appearing to have a legitimate account or connection to the business. 

Designs: If a product or packaging for a product is particularly novel then consider obtaining registered design protection. Any application needs to be filed promptly (within 12 months of creation) to be protectable.

Patents: Although generally less relevant in the online retail space, a patent is a very valuable monopoly and if applicable should be protected via a patent application.

Enforcing your rights

Once armed with proper protection then the business is in the best place possible to take steps to prevent third-party infringement. This might mean copycat websites selling knock-off products which could damage the valuable reputation and cache of the brand, or fake sites used in conjunction with fishing emails, using apparently legitimate branded email accounts and either offering non-existent jobs or seeking financial details or payments. It could even cover competitors adopting too similar a brand name or website style/content.

A business’s approach to policing its intellectual property rights is of course dependant on its profile.  For online retailers of fashion and FMCGs in particular, regular monitoring is required with many businesses relying on AI based software tools to assist them.

A business’s customers can be useful allies. Educating the customer in how to spot a fake and the risks (including ethically) of buying from unauthorised sources can engender brand loyalty as well as assisting in identifying infringements.

Enforcement actions that businesses can take include:

  • Submitting take down notices: Sophisticated take down policies such as those implemented by Alibaba (the IP Protection Platform) or eBay (the Verified Rights Owners Programme)­­ are a structured and process-driven way of clearing the marketplace of copycat product. 
  • Reporting suspected IP crime, for example counterfeit products, to Trading Standards and joining anti-counterfeiting organisations to tackle the trade in counterfeit goods at an industry level
  • Taking legal action in the trade mark and/or design registries to prevent third parties from registering names or designs that are too similar to those protected by the business’s registrations.
  • Pursuing infringers in the courts.  In the UK this would either be via an action in the High Court or the Intellectual Property Enterprise Court (IPEC), a specialist court for IP disputes where costs recovery is capped at £50,000.

Exploiting the brand

A well-protected brand only adds to its value and ensuring that your house is in order can improve a business’s ability to secure funding at the start-up stage or further investment as it grows. Certainly, it makes the sale of a business easier. 

It also facilitates brand licensing and therefore the generation of further revenue. However, it is important that sufficient control is exercised by the business to avoid brand tarnishment and reputational damage. This includes ensuring that any ‘Brand Guidelines’ are clearly drafted and adhered to and that the brand owner has the ability to terminate the licence immediately in instances of serious breach.

Retaining control equally applies to arrangements with individuals such as ‘influencers’. Best practice would see the relationship clearly contractually agreed with provisions to ensure that any influencer posts comply with the Advertising Standards Authority’s (ASA) and/or Competition and Markets Authority’s (CMA’s) codes and clearly identify promoted or paid for content, for example by being marked as #advert.

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