How To Protect Your Brand Online

• Law Firm: Gowling WLG
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Patent, Trademark, Advertising, Marketing & Branding, Social Media
• Author: Mr John Coldham and Zoe Pearman
• Published date: 15 May 2023

Due to consumer habits moving away from the traditional brick-and-mortar outlets towards online shopping (a shift that was only accelerated by the COVID-19 pandemic) and the increasing discussions around the metaverse, it is clear that the online landscape is increasingly important.

It is also clear that brand owners are facing a number of challenges online - for example, third parties registering infringing domain names or creating social media accounts to masquerade as the brand owner online, or selling counterfeit goods on online marketplaces.

The purpose of this guide is to highlight some of the strategies that brand owners in the UK may use to protect and enforce their rights in an increasingly online world. The guide below doesn't consider protection in the metaverse - but please see our insights on securing trademark protection in the metaverse for more information on this.

As a first and most important point, it is crucially important for brand owners to be aware of the online landscape and to understand what infringements exist, as well as the scale of such infringements. Without that knowledge, it is impossible for brand owners to enforce their rights or prevent/manage the risk.

Becoming aware

This is something you could do yourself, or you could speak to us and we would be happy to assist. It involves undertaking proactive searches or 'sweeps' of the relevant platforms searching for your key brands and/or product names. The sweeps should be tailored on the basis of your products, your rights, and where you're seeing issues.

We appreciate the results may feel overwhelming at first, but there are several possible solutions that can be effective and relatively low cost.

The problems (and immediate / short-term resolution)

Counterfeit products

Arguably the most obvious online problem faced by brand owners is counterfeits and 'dupe' products. It is increasingly common for counterfeiters to try and sell counterfeit goods on online marketplaces and the so-called "dupe culture" is seemingly taking over, especially on social media. However, it is worth bearing in mind that these platforms have policies governing anti-counterfeiting and intellectual property infringements.

When an infringing product (or a 'dupe') is spotted on an online marketplace or social media, it can be relatively straightforward to request a takedown. Whilst each platform has its own takedown procedure that needs to be followed, it typically involves an online form, which requires the brand owner to submit details of its rights, and the allegedly infringing listings. The relevant platform will then review, investigate and take down the listing if appropriate. Where it is a clear infringement, the platforms can take down the listings relatively quickly.

Some platforms require you to register an account before submitting a takedown. When looking to submit an online takedown request, it is important to consider what rights the brand owner is able to rely on:

• You may think that for counterfeit products the platforms are more concerned with patent or design rights, however, where a third party is using your registered trademark in the listing title, it is often effective to rely on trademark rights...