IP Infringement online. The dark side of digital

• Author: Jochen M. Schaefer
• Position: German attorney and Legal Counsel of the World Federation of the Sporting Goods Industry (WFSGI)
• Pages: 19-21

Recent estimates by major search engines, such as

Google and Yahoo, suggest that in just eig ht years,

the Internet ha s expanded by a factor of 1,000 –

the number of web pages rising from some 29 mil-

lion in 1998 to an estimated 25 billion p ages by

2006. In February 2011 , th e n umber of indexed

websites tota led some 13.86 b illion.1

The Inter net has created e normous oppor tuni-

ties for companies to communi cate t heir brand

message s. I ts g lobal reach, openness , ver satility

and large ly unregulated character have , however,

also created fertil e ground for trademar k abu se,

and al l that it entails.

Online br and misuse in its broadest sense2covers

the “classic” actio ns such a s the sale of fake prod-

ucts on or through the Internet as w ell as a range

of practi ces including s earch engine opti mization

(SEO),3uns olicited e mail, phis hing4and c yber-

squatting. 5These activiti es ma ke u p wha t many

consider the dark s ide of the digital univer se.

With estimated sale s of US$133 billio n in 2009,6

the fastes t gr owing area of counter feit trade is

online. Companies ca nnot simply rely on con-

vention al legal remedies to combat b rand abuse

on the I nternet. A mu lti-faceted a nd proactive

tradema rk protectio n strategy th at complemen ts

existin g legal p rotection is an imp erative.

A holistic tra demark protect ion strategy – built

around multiple and complement ary “detection ,

preventi on an d res ponse mechanisms”7– offe rs

an effec tive means of adaptin g to the cha llenges

of the online environment. Accor ding to

MarkMo nitor®, a global lea der in brand protec-

tion, “the desire d, holistic brand pr otection ap-

proach mea ns asse ssing e very c hannel, every

tactic abu sers may leverage, inclu ding those in

offline sett ings.” It a lso r equires, “ working across

organiz ational boundarie s to achieve the syner-

gy nee ded to ef fectively s afeguard a brand.” 8

A h olistic and proact ive trad emark pr otection

strateg y ca n e nable compa nies to ov ercome

some of the limita tions of a conventional le gal

approach . Tradema rk l aw, lik e oth er ar eas o f in-

tellect ual propert y (IP) law, is governed by princi-

ples of terr itoriality. In th e o nline environme nt,

however, whe re it is relative ly easy to maint ain an

anonymo us ident ity, usi ng “offs hore” Intern et

servi ce providers (IS Ps) or servers, fo r example,

infring ers can dodg e legal act ion init iated by

courts or adminis trative bodies in the co untries

in wh ich they have a vir tual pres ence and in

which they gener ate profits .

The difficultie s ass ociated with successfully pur-

suing on line IP infrin gers using a conventional le-

gal approach are fur ther co mpounded by a lack

of uniformi ty in the legal lands cape. While there is

a degr ee of h armonization of the laws and regu-

lations gov erning IP rights an d their enforcement ,

these are not unified. Varying laws and practices

in different jurisdictions make it difficult to navi-

gate the legal landscap e, fuelling leg al uncertain-

IP Infringement Online

THE DARK SIDE

OF DIGITAL

19

Germa n attor ney and Legal Counsel of th e World Federatio n of the Spo rting Goods Industr y (WF SGI),

Dr. Jochen M. Schaefer reflects on what companies need to do to defend their brands online.

1www.worldwide web

size.com

2 Encompassin g all

illegal on line activiti es

and damage s incurred

by an est ablished

brand or company

3 The art of tweaking

websites to rank high

in popular search

engines for keywords

related to a company’s

products a nd services

4 The process of

fraudently attempting

to acquire sensitive

information such as

usernames, passwords

and credit card details

by masquer ading

as a tru stworthy

e-commerc e entity

5 The abusive

registration of

trademarks as domain

names

6 “Protecting Your B rand

Online: The New

Marketing Imperative”

– White Paper, Mark

Monitor®, July 2009

7Ibid.

8Ibid.

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