Detection

If your business doesn’t yet have a budget for monitoring anti-counterfeiting activities, you or one of your employees, may need to spend some time each day searching the internet for counterfeit versions of your products or infringements of your trademarks. Conducting a search for counterfeits is much like searching for anything else online. Type in your product names or trademark terms in the search engine query box and then look at the results for websites that contain content that match your search query. Also query for “images” of your products by describing your product in the search box and then review the image results to see if you see a product that matches yours but is not offered by you or any authorized seller.

You should also conduct similar searches on popular social media sites  because often counterfeiters use such channels to sell to users.

Finally, you should conduct trademark and product name searches on the most popular e-commerce websites to see if your products are being sold by unauthorized sellers.

Another free way to monitor your assets, is to set up Google® “alerts” for your most important trademarks, logos, and service brands so that you receive notifications when new results show up in Google search results that match your company name, product names, or trademarks. When you receive an alert, you can investigate the result and see if an individual is using your trademarks or copyrights without authorization.

Other free tools to help detect counterfeits and infringements are certain browser “plug-ins.” For example, Google has a browser plug-in that enables you to image search for products on Alibaba ecommerce platforms such as AliExpress, Taobao, and others.

Websites managed and operated by government trademark and copyright offices allow users to search for registrations (and in the case of trademarks, applications) in their database. You can set a reminder to search these databases periodically to see if another individual or organization has registered a trademark or copyright that is similar to your own. If you find a similar mark or copyright, the owner’s contact information is in the database so you will be able to communicate with that owner.

Another effective way to monitor for infringements is to enlist the help of your community – clients, vendors, partners, supporters, and fans, encouraging and enabling them to report instances of counterfeiting or infringement. At the bottom of your website home page, add a link that says “Report A Counterfeit” that takes the user to a landing page where they can provide information about the infringement (e.g., a link to a website or the addresses of a retail store selling counterfeits).

Customers can provide a window into a potential counterfeiting problem. Since many counterfeits are poor quality and made using substandard components or ingredients, negative reviews from customers about product malfunctions or poor quality can be a red flag that counterfeit versions of your product are out there. Therefore, periodically looking through customer reviews or doing a search in customer reviews for specific words can be helpful. You may want to start with specific platforms in which you have an official store or are a current seller, or on those platforms in a specific region that is currently important to you or will be in the future.

Your customer relations or service team can provide you with potential leads about counterfeiting activities since they are the individuals receiving customer feedback. Check in with them regularly or set up a system in which they pass on information to you whenever they receive a customer complaint about a product that malfunctioned, appeared defective, or didn’t look right. A common way to identify fakes is seeing misspellings of your brand or typos in product instructions. Encourage your customer service representatives to inquire further about where the consumer bought the item as this could support your existing efforts on markets or inform you of new sources of fakes.

Many companies provide information to consumers on their website about potential counterfeits and where consumers can go to find legitimate products. You might consider putting pictures of examples of fakes vs genuine products to further educate your fans, but beware – counterfeiters will be curious too. You will want to limit the amount and types of information you disclose.

Even with a limited budget, you can use intellectual property watch and security services that will assist you with monitoring and detecting infringements by crawling the internet in search of illegal and improper use of your company’s intellectual property by third parties. The amount of time you save using monitoring or “watch service” is often worth the investment. Here are some different kinds of monitoring services:

To effectively police a trademark, organization name or logo online, you should monitor both the marketplace and official trademark registrations. Trademark “watch” services can also help you identify trademark applications for similar word marks, stylized words, and logos. If you are using design elements / stylized fonts in your logo / brand name, you will want to keep an eye out for applications/registrations that use similar or identical design elements even where the word mark isn’t copied. There are several brand protection companies that offer quality trademark watching services. Some of the most used service providers are listed in the IACC’s Expert Directory.

Before implementing your own watch service or engaging a brand protection company, it is important for you to take some time to define the scope of the service, which will ultimately yield the best results:

• Which classes of trademark services do you want to monitor?
• Should your competitor’s marks be watched?
• Which geographies or markets should be reviewed?
• Which words, designs, or logos should be included in your search?

Online copyright infringement is also commonly referred to as “piracy” and there are many third-party vendors that offer digital anti-piracy detection and enforcement. Piracy is one of the largest threats to content owners, artists, athletes, and broadcasters. Live sports broadcasts, recorded music, software, video games, and newly released premium movies and television shows are prime targets for pirates. Images, videos, and other media you have made to promote and sell your product are also often pirated. Anti-piracy software and solutions can crawl the internet and look for copyrighted images, music, videos, and other content. To be effective, you must register and render to the anti-piracy software provider, clear, original, versions of your copyrighted content.

A domain name watch services provider will monitor daily domain name registrations occurring in the DNS and notify you when domain names similar to your own are registered. Watch service providers may also offer related services such as the transmission of cease-and-desist letters to infringing registrants or the filing of claims under ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) (see also subsection (d) under Enforcement) . The important point is to become aware of infringing domain names as soon as possible so that actions can be taken quickly to take down websites that could be used to divert your customers or spread misinformation about your business, your products, and services.

When you are evaluating brand protection vendors, IACC recommends that you consider the following:

1. Scope and range of the detection software. Because infringers use multiple channels to reach consumers, brand protection software must be capable of scanning multiple sources and platforms including social media applications, search engines, e-commerce platforms, domain names, trademark registrations, as well as websites. Having the ability to scan multiple platforms, sources, and databases is crucial for identifying the true scope and degree of a company’s brand vulnerability.
2. Multiple enforcement options. Because infringements occur on diverse platforms and in different varieties (trademark, copyright, domain names, etc.), the means and methods to take down or remove these infringements vary greatly. Good brand protection software enables the user to set up customized, efficient, and often “one-click” processes to enforce against detected infringements. In addition, some anti-counterfeiting software includes features that allow users to notify their outside legal counsel of detected infringements which can trigger agreed upon legal actions such as filing a trademark lawsuit, a copyright infringement claim, or a UDRP action. Having lots of enforcement “tools” in the “toolbox” increases the effectiveness of a companies’ brand protection program.
3. Multi-lingual detection. Not every infringing term is written in Latin script. Counterfeiters, particularly those targeting consumers in Asia, cleverly transliterate brand terms into Chinese words or characters that do not get found by most detection algorithms. Having the technical capability to scan and detect multi-lingual, multi-script infringements is an important feature of brand protection software. In addition, good anti-counterfeiting vendors can scan sources using multiple IP addresses from different geographic locations and jurisdictions. This is crucial because a search conducted from one location can yield different results than a search performed from a different geographic location.
4. Customized reporting. Anti-counterfeiting services can be costly and the ROI uncertain. The best way for in-house counsel or a brand protection specialist to justify the expense of retaining a brand protection vendor is to be able to deliver metrics regarding the success of their brand protection efforts. Having the capability to customize data reporting, success metrics, and the effectiveness of enforcement actions is key to helping anti-counterfeiting specialists or legal counsel justify the cost of using a brand protection vendor to help protect its intellectual property rights online.

Open lines of communication with your authorized distributors in which they can report any red flags about your products or customer feedback is helpful. You might educate them on using your anti-counterfeiting technology to confirm that they are receiving genuine items.

Tracking down physical counterfeit sites and operations such as stores and manufacturing sites is a time and resource intensive undertaking. Given the in-depth investigative work needed, we suggest utilizing investigative services. An experienced and qualified investigator will have the networks and knowledge of your product sector to provide you with insights into potential locations and targets. He/she will be able to conduct anonymous “test buys” to gather evidence for an infringement claim and are very useful when/if you pursue a civil or criminal case (see the Enforcement section).

As with brand protection vendors, there are hundreds of qualified private investigators who are experts at anti-counterfeiting operations. Before hiring a private investigator, however, you need to do some due diligence research. When evaluating “PI” firms, please do the following:

• Confirm that the investigator is properly licensed in the jurisdiction in which the investigator works and if possible, also where the suspected counterfeiter operates.
• Confirm that the investigator carries insurance so that you are not financially responsible for damages or injuries sustained by the investigator while conducting the investigation.
• Ask for examples of previous work products – Reports, photos, investigation notes, etc. so you can evaluate the quality of the investigator’s work product
• Request references and follow up with an investigator’s current or former clients to get comfortable with the investigator’s methods and likelihood of success

A good investigation hinges on the quality and experience of the investigator; avoid going with the cheapest solution. The IACC strongly recommends conducting an “RFP process” or similar method so that it is easy to compare investigation services, and qualifications.