Trademark Lawyer 2022 Cover Story: Protecting Your Brand from Counterfeits in the Age of Social Media

December 6, 2021
The Trademark Lawyer

The 2022 edition of The Trademark Lawyer magazine is out, and Dinsmore intellectual property lawyer Sara Suleiman is the author of its cover story. She wrote about the five crucial actions companies must take to to protect their brands in the age of counterfeit goods sold on social media. An excerpt is below.

The advent of social media has permanently transformed the way products and services are marketed and sold. Between Facebook Marketplace, Instagram Shopping, and Pinterest, there seems to be little reason to shop directly on a retailer’s website, let alone physically visit a brick-and-mortar store. These opportunities and benefits come with inevitable legal and practical challenges, including protecting brand owners’ greatest assets amid a virtual minefield of infringing bad actors.

Online marketplaces provide counterfeiters with a certain degree of anonymity and sweeping access to consumers, particularly less sophisticated consumers who are not as familiar with recognizing knockoffs. They also provide access to consumers who are actively looking for luxury knock-offs. Ultimately, this results in loss of industry revenue, reputational harm to brands, and product safety and quality concerns. In order to curtail these effects, experts recommend a combination of the following approaches:

1. Develop a Strong IP Portfolio

The first step companies should take to protect their IP on social media is to develop and maintain a strong IP portfolio. Without adequate trademark registrations, enforcement becomes increasingly difficult, as many social media platforms require a registration in order to effectuate a takedown.

Companies should look strategically at their operating countries as well as future countries of interest in determining in which jurisdictions to file trademark applications, making sure to take advantage of any Paris Convention priority benefits where possible. That said, to help address the counterfeiting problem specifically, companies should seriously consider pursuing intellectual property protection in China, where over 70% of the world’s counterfeit goods are sourced from, according to the Global Intellectual Property Center. This is true even for companies with no business operations or sales in China, as China is a first-to-file jurisdiction with relatively inexpensive filing fees. Obtaining trademark protection in China can be a key weapon in a company’s IP arsenal.

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