INTA's stalwart CEO Etienne Sanz de Acedo discusses the association's shared achievement - IPPro Magazine
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Issue 20
Conference Special
INTA’s stalwart CEO
Etienne Sanz de Acedo discusses the
association’s shared achievement
Amazon’s Project A spanner in the works Words from
Zero analysed for video games? the IACC
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In this issue
p14 p42
INTA CEO Moving Marks
An interview with INTA’s stalwart CEO, One European trademark application
Etienne Sanz de Acedo still under review could cause havoc to
Editor: Barney Dixon the video game industry
barneydixon@blackknightmedialtd.com
+44 (0)203 750 6026
Reporter: Ben Wodecki
benwodecki@blackknightmedialtd.com
Major Trademark Updates The Grey Market
+44 (0)203 750 6017
A round-up of some of this year’s Jan-Maarten Laruijssen of PointerBP
Designer: James Hickman biggest trademark news takes a deep dive into the grey market
jameshickman@blackknightmedialtd.com
+44 (0)203 750 6021
p4 p16
Contributors: Becky Butcher
Account Manager: Bea Ipaye
beaipaye@blackknightmedialtd.com IACC Update Project Zero
+44 (0) 203 750 6025 The IACC’s Bob Barchiesi provides an Amazon’s new Project Zero brand
update on the association and protection platform analysed
Associate Publisher: John Savage
its recent takedown of iOffer’s
johnsavage@blackknightmedialtd.com
counterfeit marketplace
+44 (0)203 750 6021
p20 p22
Publisher: Justin Lawson
justinlawson@blackknightmedialtd.com
+44 (0)203 750 6028 Neuschwanstein Trademark Brand Partnerships
HGF attorneys Jan R. Naefe and Julia As the smartphone wars seemingly
Office Manager: Chelsea Bowles
Saladin analyse how the State of come to a close, Nokia sits poised to
accounts@blackknightmedialtd.com
Bavaria has defended its EU Trademark take advantage of the new world it has
Published by Black Knight Media Ltd for the term ‘Neuschwanstein’ created in brand licensing
Copyright © 2018 All rights reserved p28 p32
Subscribe now for free
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www.ippromagazine.com
Major Trademark Updates
Counterfeit products make up three percent of world trade
A report from the Organisation for Economic Co-operation and Development
and the EU Intellectual Property Office has revealed that counterfeit goods
account for 3.3 percent of global trade. Figures from the report show that
near seven percent of EU imported goods in 2016 were counterfeit or pirated
products. The report notes that the US was the most affected by counterfeits,
with a near quarter share of all counterfeits.
hkhtt hj/shutterstock.com
EUIPO suspends UK bar on registering EU marks
UK trademark applications can continue to be filed in the EU following the
Brexit extension to 31 October. UK filers may hold the ability to file in the EU
beyond that date if a deal is secured. The UK also retains the option of
leaving earlier.
Alexandros Michailidis/shutterstock.com
International trademark applications under Madrid
see six percent increase
Figures from the World Intellectual Property Organization revealed that the
Madrid system saw more than 60,000 trademark applications in 2018, a 6.4
percent increase on the previous year. Applicants from the US filed the largest
number of trademark applications using the Madrid system, with 8,825 filed.
Almost every country filing using the Madrid system saw growth in their number
of filings, with only Australia and Austria filing less than in 2017.
Vladimir Sazonov/shutterstock.com
China to cut trademark review times
The review time for Chinese trademarks will be reduced within five months,
according to Gan Shaoning, deputy head of the Chinese National Intellectual
Property Administration. He also emphasised that further IP protections would
be strengthened, with the costs for infringements increasing.
HelloRF Zcool/shutterstock.com
4 IPPro
Major Trademark Updates
WIPO launches free AI trademark search tool for brands
WIPO has launched an artificial intelligence powered image search tool for
brands. It can determine trademark image similarity by identifying shapes and
colours in marks and utilises trademark data from the Madrid System, as well
as from larger trademark offices.
silvabom/shutterstock.com
Trump signs memorandum on tackling illicit goods and piracy
Reality star turned US president Donald Trump has signed a memorandum on
combating trafficking in counterfeit and pirated goods, which states the US
“must improve coordinated efforts within the Federal Government to address
this challenge”. Within 210 days of the memorandum’s signing, a report on
the state of counterfeit and pirated goods trafficking and recommendations
will be published. It will provide data and extra information on the extent of
counterfeits on online third-party marketplaces and will identify factors that
contribute to trafficking illicit goods.
Evan El-Amin/shutterstock.com
Iancu v Brunetti
A case concerning whether section 2(a) of the Lanham Act is facially invalid
under the free speech clause of the first amendment has been heard in the US
Supreme Court. A US-based designer had attempted to register the term ‘FUCT’
for a line of streetwear clothing, only to be denied. Brunetti’s legal team argued
that brands like FCUK and FVCK had been granted trademarks. The justices
appeared to focus on whether the statute should be narrower, and that a list of
untrademarkable terms would be unconstitutional. No ruling has been passed
at the time of writing.
bakdc/shutterstock.com
Mission Product Holdings v Tempnology
A case questioning whether a trustee’s rejection of a trademark licence
agreement terminates the rights of the licensee that would survive the licensor’s
breach under applicable nonbankruptcy law has been heard in the US Supreme
Court. The Bankruptcy Code §365(a) gives trustees the authority to reject
executory contracts. US Congress has previously considered but declined to
adopt an exception for trademark licenses. The justices focussed questioning
on exclusive distribution rights and how Mission Product was actually injured.
Erik Cox Photography/shutterstock.com
www.ippromagazine.com
News Round-Up
INTA and COMEDUC partner on teen
anticounterfeiting awareness campaign
The International Trademark Association (INTA)
and National Trade Foundation for Education
(COMEDUC) are to partner in an initiative to
educate Chilean students about the importance of
intellectual property.
Based in Santiago, the programme aims to inform
over 3,000 students across 19 high schools
in Chillán, Curicó, Rancagua, San Fernando,
Santiago and Viña del Mar. It will officially
commence with presentations conducted by
Andrea Lobos and Rodrigo Sammut of Andes
IP. This marks INTA’s first national initiative as
part of its Unreal Campaign, originally launched
in 2012 and designed to highlight the dangers of
counterfeiting among teenagers.
In 2018 INTA contacted COMEDUC, a private
non-profit provider of professional and technical
education following its projections that the total
Jasni/shutterstock.com
global value of pirate and counterfeit goods would
reach anywhere between $1.9 trillion and $2.8
trillion by 2022.
José Luis Londoño, chief representative
officer for Latin America and the Caribbean at
INTA, commented: “We greatly appreciate that McDonald’s appeals Big Mac trademark
COMEDUC recognizes the value in educating the revocation by EUIPO
younger generation about the rising threat of
counterfeiting worldwide.” McDonald’s has filed an appeal against an EU Intellectual
Property Office (EUIPO) revocation of its Big Mac trademark.
“Informing students about the dangers of
purchasing fake goods and about the value of The trademark was revoked after Irish fast food chain,
trademarks can help contribute to their own Supermacs, attempted to register the term Big Mac in classes
development as informed consumers as well as to 29, 30, and 42. McDonald’s opposed, but failed.
the economic growth of Chile in the long run.”
The EUIPO’s cancellation division ruled that McDonald’s had
COMEDUC’s educational subdirector, Tatiana Arce, failed to “[prove] genuine use of the contested EU trademark
added: “We are very happy that the partnership for any of the goods and services for which it is registered”
has prospered.” and revoked the mark.
“Implementing the Unreal Campaign means that we Supermacs had argued that McDonald’s is engaged in
can add elements to the integral formation of our “trademark bullying; registering brand names which are simply
students; we will be delivering a training that is not stored away in a war chest to use against future competitors”.
only technical but also civic, and above
all, human.” A McDonald’s spokesperson said they were confident that in
the event of an appeal the decision would be overturned by
the EUIPO Board of Appeals.
6 IPPro
News Round-Up
LunaseeStudios/shutterstock.com
Stone Brewing denied preliminary junction v MillerCoors
Stone Brewing’s attempt to get a preliminary injunction MillerCoors added that the Stone brand is “well known in the
against MillerCoors in a trademark infringement case over beer industry for its bombastic hyperbole, pugnacious attitude,
the term ‘stone’ has been denied. The US District Court for and for launching public insults at brewers small and large.
the Southern District of California denied Stone’s motion,
ruling that the brewing company had not shown a likelihood Stone Brewing even proudly markets itself as ‘Arrogant
of suffering irreparable harm, despite finding its trademark Bastard,’ and sells a whole line of beers under the ‘Arrogant
infringement claim against Miller “moderately strong”. Bastard’ name.”
Stone Brewing accused MillerCoors of trademark infringement “MillerCoors admits that Stone Brewing has obtained a
in 2018, following the rebrand of MillerCoors’ Keystone federal trademark registration for the STONE trademark.
product, which now prominently features the term ‘stone’ on MillerCoors denies that Stone Brewing’s STONE trademark is
its packaging. incontestable as to MillerCoors.”
Stone Brewing accused MillerCoors of running a “misguided In the latest ruling, the district court also denied Stone’s
campaign to steal the consumer loyalty and awesome request to dismiss MillerCoors’ counterclaims.
reputation of Stone’s craft brews and iconic stone trademark”.
Brendan Palfreyman, a partner at Harris Beach and creator of
It said: “MillerCoors recently decided to rebrand its trademarkyourbeer.com commented: “The most interesting
Colorado Rockies-themed “Keystone” beer as “STONE”— aspect of the decision was that the court found that
simultaneously abandoning Keystone’s own heritage and the ‘relatedness of the marks’ factor weighed in favour of
falsely associating itself with Stone’s well-known MillerCoors but still concluded that Stone had a moderately
craft brews.” strong case.”
MillerCoors hit back at Stone Brewing’s claims, denying the “Where Stone lost the motion was on the showing of
allegations and lambasting Stone’s “bombastic hyperbole” irreparable harm, which can be very difficult in this type
and “pugnacious attitude”. of case.”
www.ippromagazine.com
News Round-Up
MLS opposes Inter Milan trademark
Palm restaurant owners file for bankruptcy, A US trademark for the term Inter from Inter Milan has been
accused of dodging damages opposed by Major League Soccer (MLS) over fears it would
damage the name of David Beckham’s new American soccer
Two grandsons of the original owners of the Palm team. Inter Milan had attempted to register the term Inter,
Restaurant have filed for Chapter 11 bankruptcy but MLS opposed its application as the term is associated
after being ordered to pay $119 million following with various other football clubs around the globe. Examples
a trademark lawsuit over the restaurant’s name. shown by the league included Inter Leipzig from Germany’s
Walter Ganzi and Bruce Bozzi own an 80 percent fifth tier, NK Inter Zaprešić from Croatia’s Prva HNL (first tier),
stake in the company that owns the restaurant’s and S.C. Internacional from Brazil, who are commonly known
name, while cousins Gary Ganzi and Claire Breen as Inter. MLS argued that consumers don’t associate the term
own the remaining 20. The cousins had challenged Inter with one team, and the examining attorney cited that
a flat royalty rate set by the brothers claiming that the Inter application was a potential bar to the registration of
it was substantially below market. The Supreme Beckham’s team due to a likelihood of confusion. Beckham’s
Court of New York agreed with the cousins, ruling expansion team Club Internacional de Fútbol Miami, known
that a royalty should be based on a percentage as Inter Miami, is due to appear in MLS in 2020 along with
of gross sales.New York Supreme Court justice two other expansion teams.
Andrea Masley annulled all Palm restaurant
licences as having been products of “a textbook Some 24 teams now compete in the league, compared to the
example of fiduciary misconduct”. ten when it first launched in 1994. The now-retired Beckham
previously played for Inter Milan’s biggest rivals, AC Milan. He
Co-lead trial counsel for the cousins Ganzi and also played in Major League Soccer (MLS) for LA Galaxy.
Breen, Fred Newman called the bankruptcy filing
“an attempted end run around the precedent- MLS filed its own application for Inter Miami’s name and logo
setting $119 million judgment”. on 24 September 2018.
Newman stated: “After a full trial, Justice Andrea
Masley of New York’s Commercial Division found
that defendants had engaged in a ‘textbook
example of fiduciary misconduct’—bringing a
long-overdue measure of justice to Ganzi’s family,
who had been denied their rightful legacy for more
than 40 years. While the judgment is not against
any of the Palm Restaurant companies, Ganzi
and Bozzi have forced the company that owns
the Palm intellectual property and now holds the
judgment, to file for Chapter 11 protection—an
unusual filing by a debtor that holds a multimillion-
dollar judgment with virtually no liabilities. As
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News Round-Up
Chloe Coscarelli files third trademark infringement lawsuit against former employers
Chloe Coscarelli has filed a third lawsuit against her pop-up restaurant does not infringe BCHG’s
former business partners discounting allegations of ‘by Chloe’ trademark.
trademark infringement.
The lawsuit claims the companies have “embarked on a
Coscarelli filed lawsuits against ESquared Hospitality and BC vicious campaign to interfere with, disrupt, and outright stop
Hospitality Group (BCHG) who she entered into a partnership Chloe’s growing success at all costs”.
with back in 2014.
Both chefs are seeking an award of attorney’s’ fees and costs
The companies allegedly used her image, name, recipes and and any further relief deemed proper by the court.
even domain names without permission.
Coscarelli had previously sought permanent injunctions
She had announced a partnership with fellow chef Tom barring her former business partners from selling any food or
Colicchio which would see the opening of vegan pop-up beverages using the Chloe name.
restaurant ‘Supernatural.’
Shortly after, BCHG sent letters to both chefs asking them to
cease the alleged trademark infringement.
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10 IPProNews Round-Up
Iceland loses EU trademark following
government intervention
The supermarket chain Iceland has had its
European trademark invalidated following a legal
challenge from the Icelandic government. The
supermarket had registered the term as a word
mark in classes 7, 11, 16, 29, 30, 31, 32, and 35
covering various products including consumer
electrical goods, food products, and beverages.
fototip/shutterstock.com
The Icelandic Ministry of Foreign Affairs
challenged the supermarket’s trademark claiming
it hinders companies in Iceland from trading using
their country’s name.
Iceland isn’t a member of the EU, but is the fifth
largest exporter of fish and fishery products to the CompuMark launches trademark tool
EU after Norway, China, and Ecuador, representing for small businesses
4 percent of EU fish and aquaculture imports.
CompuMark has launched Trademark.com, a US only
A statement from the Icelandic government trademark protection tool for small business owners.
said it expects an appeal from the supermarket
chain, but added that the ruling will “represent Trademark.com allows brands to monitor up to five marks at
an important and new case law when it comes a time for copycat activity and to determine a trademark’s
to registration of country names as trademarks”. availability before filing an application.
It described the supermarket’s claims that its
trademark held acquired distinctiveness through The service is powered by CompuMark and aims to provide
use as “not hold[ing] very much water”. confidence to smaller businesses looking to obtain
a trademark.
Gudlaugur Thor Thordarson of Iceland’s Ministry of
Foreign Affairs commented: “I rejoice this decision, Mara Trumbour, executive product owner of Trademark.com,
even though it is not entirely surprising because commented: “Trademark.com really helps small businesses
it goes against common sense that a private protect the ownership of their brand while addressing risks
company can claim the name of a sovereign state that are oftentimes unseen.”
as its own, as happened in this particular case.
This decision sets a precedent, provided that it “If a trademark owner isn’t actively monitoring their trademark,
remains in force. This is, therefore, an incremental another business can easily capitalise on their hard work
victory in a very significant case for Icelandic to build a positive reputation. That’s where Trademark.
export companies. Our country is known for its com shines, so small business owners can catch potential
purity and sustainability, and hence the reference copycats before it’s too late.”
to the origin of Icelandic goods has great value.”
CompuMark president Jeff Roy added: “Having personally
The EU Intellectual Property Office (EUIPO) ruled experienced the heartbreak of infringement, I’ve become
that the supermarket chain pay the cancellation extremely passionate about helping today’s entrepreneurs
fee, as well as the Icelandic government’s costs. claim their brand before someone else does.”
The supermarket has until 5 June to appeal this “This convenient, low-cost service tool was designed to help
decision to the EUIPO’s Boards of Appeal. the small business owner who has put blood, sweat, and tears
into building their brand save the additional time and effort
that comes with owning and monitoring their trademarks.”
12 IPProEtienne Sanz de Acedo • Interview
The shared achievement of the
International Trademark Association
Etienne Sanz de Acedo has been CEO of the International Trademark
Association (INTA) for six years, presiding over some of the biggest
changes in trademarks and intellectual property.
Now, as the association is expanding its mission away from being a
purely trademark focused organisation to one that deals with the wider
issues facing brands, Sanz de Acedo explains what’s next and how INTA
plans to continue servicing its members with precision and excellence.
Barney Dixon & Ben Wodecki report In terms of the geographical expansion, we historically have
been very strong in North America and Europe, but perhaps
What have been some of your greatest not as strong in other regions.
accomplishments and proudest moments as
CEO of INTA? In the last few years, we have opened a representative office
in Singapore for the Asia-Pacific region and in Santiago, Chile,
Any of my achievements are not just my achievements, they for Latin America.
are the achievements of the association. Staff, members,
the board and myself, are truly a team and that is probably In addition, we are now looking into having a presence in
one of the most successful things about INTA. Over the past Africa and the Middle East.
six years, we have been able to commit to significant and
substantive internal expansion, as well as a significant How has the association progressed since you began
geographical expansion. as CEO? What has changed?
In terms of substantive expansion, we’ve moved from purely The world is changing at a quicker pace than ever before.
trademarks into designs, copyright, data protection, data At INTA we have been able to understand that, and we are
privacy, unfair competition, and right of publicity. We’ve been trying as much as possible to remain at the service of our
undertaking impact studies that demonstrate the value of IP- members and remain influential. In order to do that we need to
intensive industries and that explore other issues and trends permanently embrace change.
relevant for brand owners.
We need to think about ourselves as an evolving organisation
It’s not just about trademarks anymore. Companies don’t talk and in terms of positioning; we see ourselves as facilitators of
about trademarks; they talk about brands. That reflects pretty best practices. Our ultimate goal is very simple: to get better
well on our strategic plan, where we talk about promoting laws to protect brand owners and consumers.
trademarks and brands, we talk about enhancing consumer
protection, and we talk about embracing innovation Now, in practice, this is extremely complex and hard to
and change. achieve, but this is what we are aiming for.
14 IPProEtienne Sanz de Acedo • Interview
Why do you think a lot of IP associations including Are there any plans to widen INTA’s scope moving into
INTA are looking at restructuring and changing the other things outside of the brand’s bubble?
inner workings of organisations?
We’re permanently having these kinds of discussions. I cannot
I can’t speak for others, but at INTA, if we want to be in anticipate what the decisions of the board will be. But the
line with the changing times in our society, then we need to reality is that you cannot think about IP in terms of one legal
permanently monitor what is going on and we need to be tool. You need to have a more holistic approach. If companies
ready to anticipate the future. and governments are taking a more holistic approach, then we
need to have the same approach.
If we see that plain packaging and brand restrictions are no
longer an emerging issue but a real problem for brand owners How can professionals overcome workloads
and consumers, then it might be time for INTA to have a full- increasing and budgets shrinking?
time committee dedicated to that.
One of the things we are trying to do is enhance the skills of
One of the things that was very appealing to me when I joined our members as individuals. Let’s face it, lawyers tend to be
INTA is that it is very well structured and the governance is conservative—I’m saying that with a background as a lawyer
very robust. We reinforce that, permanently nominating and myself. We all as human beings see change as disruptive.
repopulating the committees through the planning committee. But, like it or not, change is happening and the best thing we
Everything we do is based on vision, strategy, implementation, can do is help our members identify and prepare for those
and assessment. changes and empower them. This is what goes behind the
concept of moving from trademarks to brands.
How important is it for INTA to have such a
diverse board?
It is exceptional for the organisation and it is extremely
rewarding for me as an individual and as CEO of the
organisation. There is a rotation of one-third of our
board every year. The board is composed of two-thirds
corporate members and one third firms.
Having a board that is so diverse and that is always changing
and evolving, means that we have a lot of extremely smart and
sophisticated people sitting around a table sharing ideas—
what else can I ask as CEO?
Having worked in the intellectual property industry for
many years, how, in your opinion, has it progressed?
The industry has changed a lot. First, the boundaries between
different IP rights are changing and disappearing to a certain
extent. If you look at trademark or brand professionals, they
are doing more and more. Before, you either did prosecution
or enforcement. Now you do both, as well as work on
licensing agreements and more data protection and privacy.
The scope of work is increasing, the budgets are shrinking,
and the challenges are growing.
What is important as well is that we make sure the changes
that are happening in society are reflected in the laws and that
we make sure that our administrations and our governments
will be able to deal with those changes. This is one of the big
goals of the association.
www.ippromagazine.comThe Grey Market • Feature The dangers of the grey market and parallel importing Jan-Maarten Laruijssen of PointerBP takes a deep dive into the grey market 16 IPPro
The Grey Market • Feature
For many consumers, it may not be quite clear yet that there The difference between grey trade and
are a number of ways in which criminals can take advantage parallel importing
of online shoppers by perpetrating as reputable brands. From
counterfeiting to ad-hijacking, brands of all sizes are being Though often used interchangeably, grey trade and parallel
targeted by cybercriminals who sell rip-off products to eager imports are actually terms that apply to slightly different
consumers at an exponential rate. The vendors are constantly breaches of trade protocols. Since ‘parallel imports’ can be
coming up with new methods to skirt the legal system, all used as a legal term, which refers specifically to the importing
the while thinking they won’t get caught. But, while that’s the of products from one market to another, this is a more specific
risk they’re willing to take for their profits, we can’t help but practice in the overall infraction of ‘grey trade’. Conversely,
wonder, are the shoppers willing to take that risk, too? grey trade is more of a blanket term that consists of all kinds
of trade, including parallel imports, which do not come from
What exactly is the risk? authorised sellers.
In many cases, online shoppers are blissfully unaware of the Grey trade can take the shape of many kinds of illegal sales
perpetrators looking to take advantage of all the sales-hungry of genuine merchandise, and though it may not be counterfeit
consumers. Though generally these shoppers tend to have per se, it is outside of the brand’s official distribution network,
the best intentions—just trying to make the most out of their thus making it illegal.
hard-earned income—the truth of the matter is that when they
make a purchase on an online marketplace, shoppers run the Which industries does it affect?
risk of receiving a counterfeit or, more surreptitiously, a grey
market good. Roughly 15 years ago, a study by KPMG focused on grey
market goods found that, although most industries were
The grey market affected by leakages in their distribution chains leading to
their products being found on the grey market, this particular
Grey trade and parallel imports are the processes whereby problem was a big challenge for information technology
vendors are re-selling authentic merchandise in markets for manufacturers and their authorised distributors.
which they were not originally intended.
In the study, it was revealed that the American IT industry was
Typically, this is an unauthorised seller who has purchased the losing up to $5 billion annually—a figure that was projected to
goods legally but is selling the authentic merchandise outside continue to grow. In addition to this number, it was revealed
of the brand’s official distribution network. that within the information technology industry at the time,
there was roughly $40 billion in sales passing through the grey
Research shows that cybercrime has generated at least $1.3 market every year. Since then, the figures have been difficult to
trillion in profit in 2018 alone. Needless to say, cybercrime obtain. However, it has been made clear that the markets most
yields a lot of power in today’s trade markets. This is why one affected are fashion, automobile parts, electronic technologies,
of our objectives is to spread the word about the damage that healthcare, medical devices, specialty food and beverages,
counterfeiting does, and why we believe articles like these and cosmetics.
matter. First comes knowledge, then comes action.
Some organisations do have teams or systems in place to
Why is it called grey trade? detect and combat the breaches in their distribution chains,
however, even after all this time, it’s still a prevalent issue that
Quite simply, it’s called grey trade due to its position in an has not been adequately dealt with by government bodies nor
unstandardised ‘grey area’ in the trade market. Since the the affected businesses themselves.
problem is only relatively newly-discovered, there are not
many legal grounds initiated yet to combat this exact issue. Why it’s not commonly known
There are, however, some legal jurisdictions in place which can
be used to enforce against these types of infringements. Unlike the more standard forms of infringements which brands
tend to focus their attention on—transgressions like selling
For instance, interference would be possible in US trademark fake or copycat goods—what must be noted is that grey trade
law based on the material difference doctrine, and in the EU and parallel imports are dealing with authentic merchandise.
it’s possible to interfere based on the exception to
exhaustion of trademark in the Trademark Regulation This is the part that may be confusing for shoppers: if it’s an
and Trademark Directive. authentic product, then what’s the big deal?
www.ippromagazine.comThe Grey Market • Feature
The risk of it all All of these ‘maybes’ and ‘coulds’ lead back to our initial
point: these are the risks shoppers take when knowingly
Not only does illegal trade damage a brand’s reputation and buying counterfeit and grey trade products. Despite the
strip its profit, but it also has the potential to be harmful to the aforementioned risks being quite dire, there are also some
consumers who are receiving such products. milder risks to consider. There’s the risk that a shopper
receives a defective product, the risk that this product breaks
Take, for instance, when someone orders an electronic device down and, due to the unauthorised vendor, that product
that was intended for another country. The plug would be comes with no warranty. There’s the risk of paying but not
different, thus the voltage could be different, which means receiving a product at all. So what do shoppers have to lose?
they would need a voltage converter. The most common risk for them is the combination of a lame
product and lost money mixed in with some deep-seated
If they don’t know this, there is ample opportunity for mishaps irritation that they’ve been duped. Ideally, shoppers shouldn’t
to occur in varying degrees of severity. In this same vein, have to worry about the authenticity of their product and its
it’s hard not to mention the damage that wrongly traded vendor. But, unfortunately, that’s not the world we live in, so
pharmaceutical and medical products can cause. we must take countermeasures and we must be made aware.
If a hospital receives a device with the wrong voltage, the What to look out for
repercussions are immense. If a patient receives a medication
that hasn’t been approved by their government’s health board, If you order a product online and are unsure if it’s an illegally-
there may very well be a significant reason for that. traded item, there are a few telling signs to watch out for.
The number one distinguisher of either counterfeit or grey
trade goods is the price. Realistically, if you’re looking at a
product from a brand whose price is typically significantly
higher than the price you’ve found online, chances are it’s
illegitimate in some way. Another major sign is the packaging.
If the packaging and instructions are in a different language,
that can be a key indicator that your product has been sold
illegally. Any products that have significant price differences
between markets or geographical locations are more likely to
be targeted by grey traders, as there is more marginal profit
At Pointer Brand Protection, we take to make. If you’re concerned about the validity of the product,
intellectual property infringements very make sure you start looking for the details when shopping
seriously. If you think you’ve received a online in order to be aware of what you’re investing your
parallel import or any other kind of counterfeit money into.
or fake product, you can report it to us
through our website, in which case, we’ll Counterfeiting is more than a crime
look into the item on your behalf.
Any kind of counterfeiting is considered a crime in most
We strongly advise online shoppers not to government-regulated countries. Although the grey market
take the risk when looking for discount goods, and parallel trading fall between blurry lines, it’s best to count
but to shop with caution. Awareness of illegal them as off limits. It’s also important to be made aware that,
trade is the first step in creating a safer online contrary to popular belief, counterfeiting is not a victimless
market for everyone. crime. By purchasing illegal goods, whether authentic or
not, consumers are in fact supporting and funding a litany of
Feel free to check out our website and read harmful institutions and industries, including gangs, criminal
some of our blog posts for more knowledge. organisations, and human trafficking.
On top of which, it should come as no surprise that most
www.pointerbrandprotection.com/report-a-fake
counterfeit products are made in forced labour factories which
offer notoriously poor working conditions and minimal pay.
For these reasons and more, we advise every online shopper
to question whether the discounted price is worth their
investment into inhumane schemes.
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www.billtrader.com | sales@billtrader.comIACC Update • Feature
The power of partnerships: shutting
down iOffer and more
The IACC’s Bob Barchiesi provides an update on the
association and its recent takedown of iOffer’s
counterfeit marketplace
If you’re one of the tens of thousands of shoppers who American Express, Discover, PULSE, Diners Club and
recently visited iOffer’s website, you might have been Western Union.
surprised to see the site temporarily shut down. For the
hundreds of brands whose products are ripped off by the RogueBlock initially drew many critics who were skeptical
inferior and dangerous fakes being sold daily on the platform, of our partners’ motivations and our chances of success.
there was a collective sigh of relief. However, RogueBlock soon became the most consequential
global programme in mitigating the threats of counterfeits
iOffer has been a tremendous point of frustration for brands being sold online. Since the programme’s launch, it has shut
and the IP community. Counterfeit goods were widespread down more than 6,000 merchant accounts and affected
across the site, putting well-intentioned shoppers at risk of approximately 200,000 websites worldwide.
buying fake goods.
As the IACC coalesced around a strategy of building
The IACC and our payment partners took decisive action a formidable community of stakeholders in the fight
through our signature RogueBlock programme by disrupting against fakes, we expanded our collaboration with other
the site’s ability to process payments. While iOffer is now up intermediaries, international law enforcement and some of the
and running again, there is a notable difference. world’s most famous brands.
One brand said: “Now that it [iOffer] is reopened, I wasn’t able In 2012, at a time when brand frustrations with counterfeiting
to find any fake [company] products, which has never been issues on Alibaba Group’s sites peaked, the IACC took bold
the case in the past.” action. We invested our goodwill, resources, reputation,
and capital to form a partnership with Alibaba—a risky
We received similar feedback from several other member and but necessary move that very few were willing to take.
non-member brands, and associations. Together, we formed the IACC MarketSafe Programme. The
programme’s tremendous success paved the way for the
Our ability to take effective, swift action on iOffer is just one of IACC MarketSafe Expansion Programme (MSE), an enhanced
the many successes we have achieved through our strategy of version of its predecessor that is available to members and
partnership and community building. This success, like many non-members for free, and aims to facilitate brands’ transition
of our others, has paid dividends for the greater IP community. into Alibaba’s Good Faith Program. Both MarketSafe and MSE
have been an invaluable resource for brands and for Alibaba.
What began as an unrelated meeting at the White House Fast forward to 2019, the IACC’s collaborative strategy proved
in 2010, sparked the creation of our ground-breaking to be a harbinger of the successes to come.
RogueBlock programme, an anti-counterfeiting programme by
the International AntiCounterfeiting Coalition (IACC) and the More than 130 brands now participate in the Alibaba Anti-
largest credit card and wire transfer companies—Mastercard, Counterfeiting Alliance (AACA) working directly with Alibaba to
Visa International, Visa Europe, PayPal, MoneyGram, mitigate the threat of counterfeits on the platform.
20 IPProIACC Update • Feature
Last year, we launched our partnership with Amazon through a If there are any lessons from our experience with
memorandum of understanding and a pilot programme. RogueBlock, IACC MarketSafe, MSE, and Amazon, it’s that
partnerships work.
The programme, which allows member brands to escalate
issues to dedicated Amazon staff, is designed to increase That is why we will continue to blaze a trailand expand our
engagement between participating brands and Amazon. community of stakeholders who are committed to sharing
their information, resources and expertise with us in the fight
As a result of the pilot programme’s success, we will be against fakes.
expanding it through 2019.
There is no better time than now to join us. I look forward to
We are proud of what we’ve accomplished thus far and look the many great things we will do together.
forward to further developing our collaboration with Amazon in
the months and years to come. To find out more about the IACC, visit www.iacc.org
We will continue to blaze a
trail and expand our community of
stakeholders who are committed
to sharing their information,
resources and expertise with us in
the fight against fakes
Bob Barchiesi, president
IACC
www.ippromagazine.comProject Zero • Feature
Amazon’s anticounterfeiting ace
Amazon’s new counterfeit takedown tool puts the
power in the hands of the brands, but could cause
issues for others
Ben Wodecki reports Mark Del, chief legal and administrative officer of Vera
Bradley, which has already used the service, called
Amazon recently launched Project Zero, a counterfeit it “a significant development that will help ensure our
removal tool allowing brands to remove counterfeit customers receive authentic Vera Bradley products
listings on the ecommerce site. The tool is aimed at from Amazon”.
removing the need for brands to report counterfeit goods
directly to Amazon. While Amazon has sought to get rid of the ‘reactive’
element of takedowns, the best active way to remove
It uses automated protections and serialisation alongside counterfeits is hitting them at their source. This could
the self-removal tool so that brands can have total control mean working out supply chains, monitoring products
over removing counterfeits on the platform. Brands can being posted online, which smaller companies may not
also upload logos, trademarks and other key brand data, have the time nor resources to do.
which is then scanned against the entire product listing
looking for suspected counterfeits. Smaller companies around notable shopping seasons
such as Black Friday or Christmas may struggle to take
Amazon said that tests of Project Zero’s automation down the influx of infringing goods during such a busy
aspect have “proactively stop[ped] 100 times more time of the year.
suspected counterfeit products”, compared to what it
reactively removed based on reports from brands. Kevin Williams, CEO of RGK Innovations says his firm was
by targeted by bad actors last Thanksgiving. “Six listing
Allowing brands to remove the counterfeits themselves hijackers sprang up while I was with my family at dinner.
does negate the need to contact Amazon and, at the time We lost the Amazon Standard Identification Number
of writing, only a few brands have been given access to all weekend.”
the tool. In order to gain access to Project Zero, a brand
must hold a registered trademark and have enrolled their Products are usually infringed when a brand is popular,
brands in Amazon’s Brand Registry. especially when its popularity grows quickly. To try and
22 IPProProject Zero • Feature
quell such brand infringement in the past, Amazon used The real problem, according to Baggs, is the networks
two versions of Brand Registry, its transparency tool, and of bad actors that are engaging in infringement across
now, Project Zero. Previous tools focused on battling what multiple platforms.
Williams called “low-hanging fruit offenders”.
He said that there is “a lot of money to be made in it”
Well-known brands will likely have large legal options, with and that, to some extent, “it feels like not looking at the
devoted in-house counsels focusing solely on combating ultimate problem”.
counterfeiters, with Project Zero becoming a welcomed
addition to what tends to be an already sizeable arsenal. Amazon’s compliance is only 12 percent compared to
But for smaller brands, Project Zero may be the only tool eBay and Alibaba’s efforts when it comes to IP claims,
at their disposal. according to Williams. Of RGK Innovations’ IP claims, 90
percent come are on eBay. He suggests that Amazon is
Tools similar to Project Zero have “work[ed] well for well late in setting up robust controls and is too focused on
known, established brands that have teams in place and having a stronger bias towards leaving listings
have trademark registrations in place”, according to Tim up vs removal.
Santoni, president and CEO of Santoni Investigations.
In order to improve not just Project Zero, but ecommerce
One issue that Project Zero doesn’t help with is actually platforms as a whole, brand misuse needs to be tackled in
naming the infringers, as Amazon won’t tell brands who is an effective and wholesale manner. Given it is so early in
infringing their products. This could be vital for brands of Project Zero’s lifecycle, brand owners and professionals
any size in taking down habitual infringers. are essentially working with what Amazon has said it will
do, rather than seeing for themselves.
Counterfeits make up three percent of worldwide trade
according to the Organisation for Economic Co-operation In terms of how ecommerce platforms should alter brand
and Development (OECD), so the problem is a massive misuse policies going forward, Baggs said he wasn’t going
one for brand owners and one that isn’t going away. to hold his breath for any platforms to get on the front foot
with this problem.
Over half a billion in counterfeit goods were seized by
Alibaba Anti-Counterfeiting Alliance members on the In terms of altering Project Zero though, Baggs says that
Alibaba platform in 2018, but could Amazon be doing going forward it is going to be about making around the
more on its own platform? Currently, Project Zero is a very edge changes rather than altering it in any major way. If
simple, reactive tool that halts the most straightforward Amazon opted to resist making sensible changes, Baggs
example of brand infringement. said this would surprise him. The biggest change he
suggests is a reactive process focused on single issues,
It does make reactive enforcement faster, but something but adds that he didn’t think Amazon would “change much
focused on all aspects of brand misuse, not limited to fake in that respect”.
versions of another product, is clearly needed. Incopro
CEO and co-founder Simon Baggs explains that its “a one The ultimate takeaway is that brand infringement is not
takedown to one problem solution at speed”. solely about tackling and removing fakes of a certain
product. Increasingly other types of brand infringement
Brands in the ecommerce world likely don’t stick to one are in play, with endless examples of brand misuse being
platform to sell on. For those using multiple platforms, seen on Amazon.
Project Zero is a welcome addition to a fairly sizeable
arsenal of enforcement tools. eBay’s Verified Rights Owner Baggs recommends adding the tool to any brand
(VeRO) programme allows rights owners to report listing enforcement’s arsenal, but adds that he doesn’t think it
that they think could be infringing. According to eBay, is going to deal with all of the problems, warning that the
VeRO has 50,000 member companies and individuals issue of brand infringement was “quite involved and quite
Nimomose/shutterstock.com
covering various industries including major software broad in scope”.
companies and luxury goods manufacturers.
Moving forward, Amazon appears to have pulled a fairly
It is still early days for Project Zero, with a long way to go useful card out from its sleeve, but it may need to shuffle
before it can be declared a total success, but it seems to the deck a bit more to better equip itself and users against
be a step in the right direction. brand infringement.
www.ippromagazine.comCounterfeits in Russia • Feature
Fame, fortune and counterfeits
Evgeny Alexandrov of Gorodissky and Partners discusses
the dark side of being a famous brand and how those
with rights in Russia can protect them
Counterfeiting is the bad side of being a famous brand.
Nobody will produce fakes of a brand which is unknown and • Recordal of a trademark in the Customs IP Register
counterfeiters make money on selling fake goods bearing the (Russia and Eurasian Economic Union countries)
names of popular brands. Very often people may buy such
products with clear understanding they are not genuine, but • Taking offline legal actions (investigations, police
some people may be intentionally misled by the bad guys. In raids, litigation)
both cases, the brand suffers damage and the brand owner
has to defend it. The strategy for defence depends on a • Online brand protection actions (monitoring
country and options available under the local laws of a and enforcement)
given jurisdiction.
If the brand owner focuses on one option only (for example,
As far as Russia is concerned, it is a matter of fact that offline legal actions), it will not bring positive results and will
most of counterfeit goods are imported to Russia from other not be effective. In such a situation the volume of sales of fake
countries. Therefore, it is necessary to monitor the movement or grey imported goods will be increasing, especially taking
of the goods through the border to detect and prevent into account that the worldwide ecommerce market is growing
illegal importations. In this light, it should be noted that the rapidly and it is very easy to sell the goods to other countries
Russian Customs is very active and cooperative with the without physical presence there. In this regard, building up
brand owners whose trademarks are recorded at the special efficient online brand protection plays an extremely important
customs IP register. In case the trademark is not recorded in role in stopping spreading counterfeit goods.
the customs IP register, the customs can do
random inspections. An efficient online brand protection strategy uses online brand
protection solutions that reveal the use of a brand on the
It should also be taken into account that Russia is a member Internet and send take down notices automatically. In most
of the Eurasian Economic Union established by five countries: cases the existing solutions are operating in a similar way but
Russia, Belarus, Kazakhstan, Kyrgyzstan and Armenia. Since the enforcement actions will depend on the:
there are no customs borders between the countries within
the union it is advisable to record the trademark in the local • type of platform (marketplace, social media, single
customs IP registers of each country-member to prevent website, etc)
illegal importation of the trademarked goods from other
countries and its free flow within the union. • language issue (search tools, analysts)
Once the goods cross the border they become available to • local laws
consumers on the local market. Sometimes there are single
shipments (private parcels) but in most cases the goods According to Russian law the use of the trademark without
are stored in a huge warehouse from which they are spread consent of the trademark owner shall be considered as an
throughout the country. It seems that the best approach here infringement and entails negative legal consequences for the
will be locating the warehouse or a big sale point and arrange infringer (damages, statutory compensation, destruction of
the police raid. In order to go this route an investigation goods, etc). This is a legal basis for taking legal actions to stop
agency should be involved. illegal sales that can be used for automated brand protection
solutions allowing sending take down notices to website
Therefore, the efficient strategy for brand protection in Russia owners, Internet service providers, Internet hosting providers,
should include three main options: platforms (marketplaces, social media, etc).
24 IPProCounterfeits in Russia • Feature
The first step before sending take down notices is
identification of the infringer. The WHOIS database may be
used for this purpose. However, in case the domain name is
registered by a private person it may create some difficulties
since the Russian Data Protection Law does not allow the
trademark owner to get information about the private person
from the registrar. In the meantime, in case such information is
requested by the Russian attorney-at-law it must be provided
within 30 days.
Once the infringer is identified, a take down notice may be
sent. In order to be valid and effective the same should be
based on the relevant provisions of the Russian law and
written in the Russian language. Take down notices in
foreign language or containing just general wording are
usually ignored.
Automated take down notices with standard claims may bring
positive results in about 80 percent of cases depending on the
compliance rate of the platform or website owner, provided
that all formalities are performed in accordance with
the requirements.
According to the Russian law a platform shall be considered
as an “informational intermediary’”which is liable for
infringement of trademark rights if fails to cease the
infringement upon receipt of the complaint from the brand
owner. Big platforms are usually cooperative with brand
owners and remove infringing ads very quickly. However,
some local platforms in Russia require take down notices
be submitted in original along with a copy of the certified
trademark certificate and certified copy of power of attorney.
Also they may raise additional requirements. They may
state that they cannot identify whether the advertised
product is counterfeit or not and required to produce
a copy of the court decision with respect to the
particular seller.
Obviously, such an approach is quite
bureaucratic and, in fact, may be in favour of
sellers of fake goods.
www.ippromagazine.comCounterfeits in Russia • Feature
In order to identify such illegal websites or other internet resources,
regular online monitoring is required and automated brand protection
solutions would be the best approach to protect brand against online threats
Sometimes, the infringers refuse to remove the trademark agencies, etc. There is no extensive judicial practice in the
from their website or ignore take down notices. In such a application of the said rules in such a way, but it has been
situation the brand protection legal team should be creative already successfully tested at the pre-trial stages.
and elaborate new strategies on the basis of options provided
by the local laws. Counterfeiting is not a single threat for brands on the
internet. There are fraud and phishing websites that use
For instance, in case there are copyrightable subject-matters website designs identical to the original one with the purpose
on the website the brand owner can rely on the law ‘On of stealing users’ personal data and payment details. The
Information, Informational Technologies and Protection infringers can use fake mobile apps, accounts in social
of Information’, according to which the right holder or an media, or even register almost identical domain names to
exclusive licensee shall be entitled to file a complaint to the attract users and sell counterfeit goods, or get access to their
domain name owner and/or informational intermediary which personal banking cards details.
must be considered within 24 hours. In case the complaint
is not satisfied the rights holder is entitled to file a special Sometimes it is very difficult for the internet users to identify
lawsuit at the City Court of Moscow which has competence fake websites or groups in social media because they look like
in handling copyright infringement on the internet and can original. The infringers very often use SEO promotional tools
issue an injunctive relief ex-parte within 24 hours. This is an to be ranked in high places in the search engine results and
extremely fast procedure which allows to block the website therefore it may happen that the first result a user sees in a
within a short period of time. search engine is a fraud or phishing website.
Another option is to make an additional pressure on platforms In this light, in order to identify such illegal websites or other
or domain name registrars or informational intermediary internet resources, regular online monitoring is required
through the ‘joint liability’ rule envisaged by the civil code, and automated brand protection solutions would be the
according to which in case the infringement is committed best approach to protect brand against online threats or at
by several persons they shall be liable for such infringement least reveal them before they inflict damage to the brand
jointly (para 6.1 of article 1252 of the civil code). or consumer, provided that local analysts and lawyers take
necessary actions in accordance with the local laws.
At that on the basis of article 323 of the civil code the claim
can be filed against all those infringers or to any of them. It The above possible actions against infringements on the
should be also noted that this is not limited to informational internet are not exhaustive and the Russian law provides quite
intermediaries only but can also allow to submit claims (at efficient measures that can be used to stop the infringement
least send cease and desist letter) to other persons, including depending on the circumstances surrounding the
payment service providers, warehouse owners, advertising particular case.
26 IPProYou can also read
