Put protection in place to effectively tackle counterfeiting when a brand or product is ready for launch
Once a new brand or product has been chosen and designed, it is important to consider protecting its associated IP. In this chapter, we will discuss which aspects of the brand or product can be protected with IP, which forms of IP protection are appropriate, and how to put this in place to maximise protection against counterfeits.
Key aspects of this to consider are:
- Which aspects of the brand or product differentiate it from competitors and are most likely to be copied;
- Which forms of IP may be relevant to protect these;
- Which territories and sales channels are of most importance.
Brand owners can then work with their brand protection advisors to use the above information to formulate an appropriate strategy to add layers of bespoke IP protection to their brand and/or product and make it harder for counterfeiters to copy them.
Elements of a new brand or product might be suitable for protection
The main elements of a new brand or product that might be suitable for IP protection are:
- Brand name – this should ideally act as a key differentiator from competitors;
- Logo - this may act as a clear, recognisable and memorable visual reference;
- Other branding assets/packaging designs – other elements of branding used consistently on packaging etc. such as patterns or colourways might be used to distinguish the product/brand from those of third parties;
- Product design/shape – this may be particularly unusual and distinguish the product from competitors.
In considering how to approach the protection of IP, it is important to consider which of the above aspects of the new brand/product are particularly different from competitors and help it stand out from the rest of the market, and the extent to which they can be protected in countries of interest.
There are several different forms of IP rights that brands can use to protect these intangible assets, but for the purposes of this guide we will focus on trade marks, designs and copyright.
Trade marks
What can trade marks protect?
Trade marks can take numerous forms and protect many different brand assets. The protection is designed to safeguard the elements of branding and product design that consumers use to identify the brand owner.
As marketing, technology and consumer behaviour has changed over time, the range of assets that can be protected with trade marks has grown. This form of protection may be used to protect word marks, figurative or logo marks, product shapes, branding or packaging designs, pattern marks, colours or colour combinations, and even more unusual marks such as sounds, holograms, motion marks and multimedia marks.
Depending on the nature of the brand and its associated product(s)/service(s), bespoke combinations of these trade mark types can be used to secure maximum protection for all proprietary elements and brand assets associated with your brand and product(s)/service(s).
Once registered, trade marks can enable you to prevent third parties from using similar or identical marks for similar or identical goods or services.
Conditions for protection
Although some countries allow rights to be obtained through use, brand owners are in a stronger position if they register their marks with the relevant IP offices of their countries of interest.
To proceed with protection, it is necessary to identify the mark (this might be the brand name, a logo or product design as discussed above) and goods or services of interest – ideally, it is important to cover the current product and/or service range of interest as well as future products and services that might be added to the brand.
To be protected, trade marks need to be capable of acting as a badge of origin of a single brand owner, so they cannot be completely descriptive or generic in relation to the goods/service. This means it is harder to protect words that are descriptive or commonplace in relation to the goods/services, or elements such as colours or product shapes unless they are particularly unusual. As mentioned in the previous section on the creation of a brand name or logo, the more distinctive or unusual it is, the broader the scope of protection will be.
Trade mark applications can also face obstacles if there are identical or similar earlier trade marks in existence that can be used to prevent registration or use of the later mark – our comments in the previous section on brand creation and the value of research to identify conflicting earlier trade marks apply here.
Time limits
Unlike other forms of IP, it is in theory possible to protect trade marks at any time and, in some cases, even if you focus on protection of the core brand name initially, it may be possible to add registrations for multiple brand assets after a product has been launched to strengthen protection over time.
Once trade marks are registered, it is also possible to renew them indefinitely every ten years. Protection can therefore last as long as the brand or product is commercialised.
Designs
What can designs protect?
Designs protect the visual appearance (either 2D or 3D) of the whole or part of a product, such as shape, colour, texture, surface pattern, material and ornamentation (this may include logos as well as product designs, for example); however, it is not possible to obtain protection in respect of any product features that are solely dictated by technical function.
Once protected, designs can prevent third parties from using designs which look the same or are very similar – the scope of protection depends on how similar the design is to pre-existing designs and how much design freedom exists when creating the design.
Conditions for protection
In some cases, it is possible for protection to subsist in unregistered designs. However, this form of protection varies from country to country, and, in some cases, the designer may not be entitled to this protection. A design registration provides greater clarity, and protection will generally last longer.
In the EU and UK for example, to be protected, designs must be new and have “individual character”. This means protection should be obtained as soon as possible. As mentioned, designs protect the visual appearance of the product and not technical function, so elements of the designs which have purely technical purposes are not suitable for protection.
Where an external designer or design agency not employed by the company which will own the design has been involved, it may be necessary to arrange for ownership in design rights to be transferred to the company.
Time limits
Designs must be new to be protected, so registration applications should be filed as early as possible, ideally before product launch. However, some countries (e.g. EU and UK) provide a 12-month grace period after the design has been released by the designer to file design applications.
Once registered, designs can be renewed for up to 25 years depending on the country in question.
Copyright
What can copyright protect?
Copyright protects original artistic, literary and musical works as well as non-literary written work such as software and sound/music/film/television recordings, to name but a few.
In the context of branding this means copyright can, in some cases, extend to cover logos, brand assets and product designs as well as marketing materials, photographs and collateral.
If protection is available, this allows the copyright owner to prevent third parties from copying substantial parts of the works in question. As with designs, the scope of protection depends on similarity with previous artistic works.
Conditions for protection
In general, provided it is an original artistic work (regardless of artistic quality), protection will be available but the scope of protection will vary.
In most countries, copyright arises automatically upon creation of the work. However, in some countries such as China or the USA it is also possible to register copyright to provide a stronger basis for enforcing it against third parties.
As with designs, if the work in question is created or designed by a third-party design agency or designer not employed by the owner, it may be necessary to arrange for ownership to be transferred to the company exploiting the work.
When enforcing copyright protection, it is necessary to provide evidence showing when the work was created, by whom it was created and to prove ownership of the work.
Time limits
The term of copyright protection varies according to the type of work and the country in question but in many cases can last longer than the life of the author of the work. For example, in the UK protection can last for the life of the author plus 70 years.
If seeking registered copyright protection (e.g. in China or the USA) this can be pursued at any time during the term of protection.
Overview of what forms of IP protection are available for different brand assets
The nature, purpose, scope and duration of protection for IP rights can differ significantly and it may be possible to obtain multiple forms of IP protection for the same brand asset or design to maximise the strength of protection. The table below illustrates this:
| Brand name | Logo | Branding/ Packaging |
Product shapes | |
| Trade marks | ✓ | ✓ | ✓ | ✓ |
| Designs | X | ✓ | ✓ | ✓ |
| Copyright | X | ✓ | ✓ | ✓ |
As mentioned above, the value of seeking each of these forms of protection depends on the importance of the role played by branding elements (brand name, logo, branding/packaging design or product shape) in distinguishing the new brand or product/service from the competition, as well as how suitable the different forms of protection would be.
For example, if a new brand is selling products that are not particularly new or original (for which design or copyright protection may therefore not be available), protecting the brand name and logo with trade mark registrations may be the best or only option.
However, if an entirely original product design is being brought to market, it may well be worth securing design protection for the product design, as well as protecting the brand name and logo. This would enable the brand owner to prevent copies of the product being put on the market under a different, non-infringing, trade mark and would provide a higher barrier to entry for counterfeiters.
Approaches to international IP protection
As we have already discussed, IP rights are territorial, so it is necessary to obtain protection separately in territories of interest for a new product or brand. A brand might be available in one country but not another, so plans for searching, selecting, and protecting brands should align with the product's marketing plan and timeline. A good trade mark attorney will be able to make recommendations for timing and budget forecasting as part of a brand strategy over the long term.
How to prioritise countries
There is no such thing as a ‘worldwide’ trade mark. Clearly, the greater the number of countries, the greater the cost of seeking IP protection. However, it is possible to cover 80% of the world’s GDP with a few strategic filings. It is best practice to focus on:
- Sales markets for the product currently;
- Future sales markets of interest in the short to medium term;
- Manufacturing locations for products;
- Known locations for counterfeiting of products (as an example, over 80% of counterfeit products originate from Hong Kong and Mainland China alone).
Managing and deferring cost of international IP protection
There are certain ways in which budgets can be managed over the longer term, whilst still ensuring the right level of protection. For example, after first filing IP applications, IP owners can take advantage of the “priority” window available to obtain protection in many other countries.
This allows brand owners to wait up to 6 months after first filing trade mark or design applications in their home country before filing international applications to register the IP but claiming the same earlier date of protection (and deferring the second round of filing fees).
This means brand owners can take longer to consider areas of geographical focus for IP protection for a new brand or product depending on how marketing activity progresses, and to spread the cost of filing applications without losing an earlier date of protection.
To keep track of expenditure, it is also possible for brand owners to use central international IP filing systems - such as the Madrid Protocol for trade marks, and the Hague Agreement for designs - to obtain protection more cost effectively in several different countries through the same application process.
Consider bespoke approaches for different countries
Although some countries follow similar laws, obtaining and protecting trade marks will vary from country to country. It is also the case that different forms of protection - or strategies for protection - may be relevant in different countries.
For example, in China the process for obtaining trade mark protection can be comparatively long, complicated and difficult. This is because the examination checks if the applied mark is distinct enough from other marks already registered or applied for in similar goods or services. The criteria for examination are quite stringent and less flexible than other jurisdictions. In contrast, in the UK or before the EUIPO, prior rights do not automatically block trade mark applications, so the systems are fairly different.
For logo elements, in China it is possible to register copyright, and this can be granted more quickly and easily to enable the copyright owner to prevent third parties from using similar logos in China for sales or export purposes. There is no ‘register’ for copyrights in the UK or before the EUIPO. Therefore, any brand strategy will need to take account of variance between local laws and practices, and this, in turn, should be reflected in the brand strategy.
Maximising protection in respect of counterfeits
Counterfeiters often exploit a brand’s reputation. Making a strong protection strategy is essential to combat counterfeits, safeguard customer safety, and protect the company’s investment in innovative products and services. To formulate this, it is important to consider the following, both ahead of and after the launch of a brand or product:
- What aspects of a brand or product may be copied, and review this over time;
- Which countries are key for sales and manufacturing, and where counterfeiting hotspots are located for the sector in question (this can also change over time);
- Routes to market e.g.
- if via a distributor, ensure agreements are in place to confirm ownership of IP and encourage them to be vigilant to identify counterfeiting activity in the market;
- if via online marketplaces (e.g. Amazon, Alibaba etc.), consider putting in place specific forms of IP protection to support enforcement activity on these platforms.
In terms of known destinations of counterfeit products, recent data suggests that the US and EU together account for over 80% of all counterfeit goods customs seizures and over 90% of the global value of goods seized by customs worldwide. Likewise, the top 5 countries for value of fake imports worldwide are listed as the US, Hong Kong, Germany, Japan and the UK. So, by being strategic in covering a handful of territories, brand owners can capture the majority of markets for counterfeit goods.
To get the most value, brands in particular sectors may wish to focus protection efforts on the destination economies with the highest value of counterfeit products imported, and highest prevalence of counterfeit products in the market as a proportion of the whole. For example, in respect of pharmaceutical products, it has been estimated that Argentina is the biggest single destination for counterfeits and that counterfeit goods constitute the largest share of overall pharmaceutical products imported of any country worldwide. Likewise for cosmetics, India is ranked in the top 15 for value of counterfeit cosmetics imported, and third by share of counterfeits as a proportion of overall cosmetics imported into the country.
Turning to the sources of counterfeit products, European Commission research has shown that the most common countries from which counterfeits are being shipped into the EU are currently China, Hong Kong (which alone represent 80% of all counterfeit goods imported into the EU) and Turkey so, as part of an anti-counterfeiting and brand protection strategy, it would be important to consider relevant IP protection in these countries to enable brand owners to take action against this activity at the source.
In the context of China/Hong Kong, brand owners should also consider neighbouring territories, especially when their brand name/logo lacks trade mark registration protection. For instance, Macau functions as a vital transit point for goods exiting China. By registering a trade mark in Macau and recording it with the local customs authorities, brand owners can significantly reduce counterfeiting risks across borders. Customs authorities in China, Hong Kong and Macau regularly take joint enforcement actions to tackle counterfeit goods.
Differing local practices can also offer opportunities for brands to maximise their protection –it is possible to register copyright in China and then record the copyright registration with China customs. This approach is typically a quicker process than trade mark registration, meaning that brands can more quickly commence enforcement work against bad actors. Turkey might not seem like an obvious choice for filing, but as a major transit hub for counterfeit goods, especially clothing, registering there makes it much easier to stop counterfeits.
There are also counterfeiting trends specific to different sectors and industries, and this landscape can often change quite quickly. Recent reports highlight the prevalence of counterfeit luxury fashion in South East Asia at the moment (including Cambodia, Vietnam, Laos and Thailand), and European Commission reports highlight that clothing has been the top counterfeit product category shipped from Turkey to the EU in recent years, making these regions crucial for brands in this sector to consider.
It is important for relevant brands to have strong IP protection in the countries with most value to them depending on sales, manufacturing and trends in their sectors to be able to take local action against counterfeiters.
After considering the above, brand owners can:
- Obtain IP protection for key brand assets in relevant territories at the outset;
- Tailor IP protection to address likely or actual counterfeiting activity e.g. if counterfeiters frequently copy part of a logo or word mark, obtain separate IP protection for it to simplify enforcement and target counterfeiting hotspots;
- Obtain IP protection that is targeted at particular markets and/or sales channels to catch counterfeit activity e.g. secure design protection for product shapes to address cases where counterfeiters obscure or replace the brand in online listings, or register copyrights in China to tackle logo mark copying;
- Monitor the market over time, ideally at least at a 6–12 month basis, to assess development of the nature of counterfeit activity and the most popular elements of brand/product to add in further layers of protection (as mentioned, there is no time limit to seeking protection for trade marks).
