Legal Briefing

Is it possible to manage a brand in the current online world?

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Reputation Management | 03 May 2019

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The way the internet works is an issue on everyone’s mind. The growth and power of massive social media platforms, fake news, online scams, how we as consumers receive and understand information and who controls this is mainstream news. These platforms have made it easy to get messages to a wide and international consumer base. Online marketplaces have made it far easier to sell products all over the world and to reach almost any customer, but they make illicit use easier and more accessible as well.

The online world is a massive opportunity for brand owners, but is also a huge issue. And it is not just the domain of online retailers – it is a massive issue for all brand owners. If your brand makes product, then marketplaces (there are now over 1,000 online marketplaces around the world) are likely to be your main issue (although there will likely be thousands of issues not just a few). Social media and web use are also a challenge. If your brand is more service orientated, then web and social media (there are now over 100 social media platforms to look at) will likely be the key issue. Service brands are also prone to domain squatting issues. Even if you do not aspire to be an online retailer or have an online presence, this does not mean that consumers will turn a blind eye or that threat factors will not take advantage (for example, the growth of scams such as phishing emails purporting to be offering a job (B2C) or requesting funds paid into a different account (B2B)).

Consumers are also increasingly using mobile devices for information and personal services (such as banking and shopping), making mobile apps and platforms, such as WhatsApp and WeChat, increasingly important. Sometimes these platforms are used to promote web use, but in addition some of these messaging apps are developing content and sales platform capability (such as Facebook and WeChat).

Historically the approach to dealing with these issues was to attack the platforms themselves. If brand owners could get the platforms to deal with the issues happening online then this would be easier than dealing with all of the individual issues. This started with a range of cases against eBay (culminating in L’Oreal v eBay [2011]), which eventually established that eBay did not have primary liability for what was happening on their platform. A range of cases against Google (eg, Google France SARL v Louis Vuitton Malletier SA [2010]) established that Google’s activity in selling adwords and pointing consumers to potentially competitive or infringing sites did not fall foul of IP laws. While some more recent developments (such as the Cartier case in the UK, looking to impose the need to block infringing sites on ISP providers – Cartier International v British Sky Broadcasting [2016], and the recent decision for Tommy Hilfiger – Tommy Hilfiger Europe BV v Facebook Ireland [2018]) suggest some development in favour of brand owners, the general principle that the large platforms or providers are not responsible for what is going on online seems established. No doubt there will be developments – the online world changes fast – but it seems that it is up to brand owners to be proactive if control is to be maintained.

The volume of issues makes traditional lawyering obsolete. Manual review cannot deal with it and so technology is key. Ten years ago there were no effective options but there are now lots of providers that conduct monitoring and analysis. Some form of monitoring is an essential first step to keeping your brand clean online. But the issues can’t be dealt with by technology alone. Some form of cost-effective standardisation is essential to deal with all of the noise that we see online. The sophisticated nature of some of the scams and persistence of infringers also calls for a more nuanced approach than simply outsourcing to a platform provider and hoping for the best.

Without good monitoring, it is impossible to understand the range of issues that your brand is facing. Just reacting to what your business people or customers tell you about will never be enough. However, the monitoring has to be coupled with more detailed intelligence both in terms of what is gathered from the online world and the meeting of the online and offline worlds. This might be in the form of making sure that the data coming from the monitoring platform is properly analysed to see if patterns can be determined, but also conducting more detailed offline investigation to find out what is going on behind the online sales (in terms of manufacture, control, origination). This will also include conducting regular health checks on the effectiveness of a programme to ensure that it is fit-for-purpose – again, having one in place is not the end of the story.

The issues are no longer about one jurisdiction – we need to be experts on managing issues all over the world in terms of intelligence and available options for enforcement. This is no easy task in view of variable legal positions and huge cultural variation. Knowledge of key options and strategies for different issues is essential.

While a great monitoring platform and use of takedowns and other standard enforcement approaches in place on marketplaces and social media platforms is important, this will not in itself deal with the issues. Traditional enforcement should also not be ignored – some proper escalation is a key aspect of a good online strategy – it is only by finding the key players behind the problems and dealing with them effectively that any real progress can be made.

But even this is not enough to create a clean and distinctive presence for your brand online. In the battle against infringers it is easy to end up focusing too much only on attack and not enough on sensible proactive brand management. You should consider:

  • The brand’s own online profile.
  • Consumer education and engagement around reporting fakes and awareness of influencer fraud/fake advertorial content.
  • How to support distinctive characterstics of the brand and help consumers identify the real thing.
  • How to enhance the brand’s presence?
  • Sensible trade mark protection, as well as other types of protection such as designs, copyright recordal etc – brand owners need to be holistic and alive to third-party use.
  • Physical enforcement (customs, physical markets)?
  • Internal policies and management of these issues?
  • Use of technology within the brand, eg, pixel planting in imagery and counterfeit detection built into garments?
  • Collaborating and putting any commercial divisions or different legal representatives aside to deal with common enemies.

Getting management buy-in for a proper programme can be an issue. While IP and online infringement is high profile, in businesses it is also a cost centre. Getting rid of noise online is not sexy, and it can be difficult to understand why it is important. Understanding of value of the brand, and how these issues impact on it can really help with this. It can also be useful to show that platforms are a tool for watching as well as enforcement and that the data can also be used to further commercial success, for example, by getting guidance on what consumers are looking for.

A brand is no longer only about guaranteeing origin and ensuring no loss of sales to infringers. It is now an increasingly important and valuable asset that needs to be looked after in order to ensure its value grows. Dealing with online issues and online presence is an essential part of maintaining distinctive character in the brand and in creating and keeping brand value.

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