Possible IP Enforcement Strategies to Counteract Counterfeiters
ANDREW GARDNER: POLAR PEN
What are some practical approaches currently being taken by Andrew?
Through his own efforts, Andrew was able to get some of the online retailers to remove the infringing websites selling counterfeit products, but as soon as one site was taken down, another cropped up, and he could not keep up on his own.
Andrew has now hired a third-party organization that is systematically enforcing his industrial design rights by forcing online retailers to remove any listings linking to the offending websites. He is now having much greater success at taking down the infringing websites and disrupting and discouraging the circulation of counterfeits and knock-offs.
From what you have learned to date, what other IP strategies could Andrew consider at this stage (after the Kickstarter campaign and the counterfeits and knock-offs started entering the market)?
- The possibility of using border-enforcement measures in certain countries, which might act as a deterrent even though Andrew would still likely have to initiate a lawsuit in conjunction with border enforcement.
- The possibility of forming a partnership or joint venture with someone in the country or countries from which the knock-offs and counterfeits are emanating, who may be better positioned to stop knock-offs and counterfeits because they have a local presence.
- The possibility of domain-name dispute arbitration if the infringers are using his trademark POLAR or a confusingly similar one in their domain names and websites.
- The possibility of developing a strong customer education strategy, including providing his customers with ways of recognizing authentic POLAR Pens, similar to UGG’s customer education campaign and Taylor Swift’s merchandising campaign, discussed in previous modules.
Possibly, but mediation would be unlikely to succeed against a counterfeiter who believes itself to be largely untouchable through traditional enforcement mechanisms. Also, mediation requires that both sides genuinely want to achieve a mutually acceptable outcome.
There are no hard and fast answers to resolving Andrew’s international IP infringement concerns. However, learning from Andrew’s example might help you better anticipate and plan for the kinds of IP eventualities that he faced.
Last modified: Wednesday, 30 September 2020, 12:49 PM