Fan­ta Punch

In the re­cent past, courts in the Unit­ed States and the Unit­ed King­dom award­ed con­sid­er­able dam­ages for trade mark in­fringe­ment of coun­ter­feit goods sold via so­cial me­dia.

In Nike Inc v Kiy LLC , a New York based claim, Nike brought pro­ceed­ings against In­sta­gram in­flu­encer Kook Kiy and his com­pa­ny for the sale and pro­mo­tion of fake Nike Air Jor­dan and Dunk de­signed goods which di­lut­ed its brand and caused con­fu­sion amongst con­sumers. The par­ties reached a set­tle­ment where Kiy LLC agreed to pay over US$1 mil­lion to Nike.

Sim­i­lar­ly in the Unit­ed King­dom, an in­di­vid­ual Sajid Hus­sain, who sold coun­ter­feit t-shirts which al­so in­clud­ed Liv­er­pool, Man­ches­ter Unit­ed and Ar­se­nal kit via so­cial me­dia was re­quired to re­pay £118,000 or be sent to prison. Us­ing an­ti-mon­ey laun­der­ing leg­is­la­tion was ben­e­fi­cial in be­ing able to re­cov­er as­sets, fol­low­ing the mon­ey trail and bring­ing the of­fend­er to jus­tice.

Ef­fec­tive man­age­ment and pru­dent com­mer­cial­i­sa­tion of in­tel­lec­tu­al prop­er­ty rights such as trade­marks, patents, in­dus­tri­al de­sign and copy­right, are in­valu­able to the growth and prof­itabil­i­ty of busi­ness.

The three orig­i­nal limbs of en­sur­ing this suc­cess re­main ob­tain­ing in­tel­lec­tu­al prop­er­ty own­er­ship, main­tain­ing and pro­mot­ing the brand and last­ly tak­ing all nec­es­sary steps to pre­vent unau­tho­rised use or in­fringe­ment of the in­tel­lec­tu­al prop­er­ty.

Brand rep­u­ta­tion is how a com­pa­ny’s prod­ucts are per­ceived by its in­vestors, cus­tomers and the mar­ket as a whole. It re­flects cus­tomer ex­pe­ri­ence, as­so­ci­a­tion with the brand and the com­pa­ny. The risk or dam­age to a com­pa­ny and its rep­u­ta­tion can come from a num­ber of fronts and the sale of fake or poor qual­i­ty looka­likes, par­tic­u­lar­ly in the dig­i­tal space and through so­cial me­dia, is one which must be tak­en se­ri­ous­ly.

Coun­ter­feit ac­tiv­i­ty is a world­wide phe­nom­e­non which con­tin­ues to ex­pand and thrive. In the Caribbean and at home, peo­ple con­tin­ue to be vul­ner­a­ble to the re­al threat.

Our ju­ris­dic­tion is in­ter­con­nect­ed to the glob­al il­lic­it econ­o­my, and the sale of coun­ter­feit goods is a healthy cat­a­lyst for a host of il­le­gal ac­tiv­i­ties such as hu­man traf­fick­ing, transna­tion­al crime, counter fi­nanc­ing of ter­ror­ism, drugs, guns and smug­gling to name a few.

The will­ing­ness to pur­sue in­fringers, per­haps based less on size of op­er­a­tion but on val­ue and lo­ca­tion of the coun­ter­feit­ing en­ti­ty, sig­nals the im­por­tance of adapt­ing en­force­ment strate­gies to match those of the in­fringer.

To­day, is it not enough to on­ly bring in­fringe­ment pro­ceed­ings against an im­porter or whole­sale re­tail­er, for ex­am­ple via a seizure ac­tion with Cus­toms & Ex­cise at ports of en­try. Pur­su­ing in­fringe­ment in the dig­i­tal space, re­quires a slight­ly dif­fer­ent mind­set to go af­ter me­dia in­flu­encers who are sell­ing or pro­mot­ing fake goods to his/her loy­al fol­low­ers.

Mon­i­tor­ing on­line sites and so­cial me­dia con­tin­ues to be in­te­gral to­day for all busi­ness in man­ag­ing any risk to brand rep­u­ta­tion. Threats in­clude on­line sites sell­ing coun­ter­feit goods, mis­spelt do­main names, mis­di­rect­ing on­line users, and “fake news”be­ing post­ed and quick­ly dis­sem­i­nat­ed to the pub­lic and the ef­fect of so­cial me­dia in­flu­encers com­plic­it in the pro­mo­tion of coun­ter­feit goods.

Hav­ing the ca­pac­i­ty to as­sess the full ex­tent of the prob­lem, gath­er all the facts, cal­cu­late the cost, con­sid­er all the risks, the pros and cons of act­ing or not and hav­ing a good well-trained team in place are on­ly a few fac­tors a busi­ness should face in de­ci­sive­ly mit­i­gat­ing risk and pro­tect­ing its rep­u­ta­tion.

In T&T, it is about four years since the im­ple­men­ta­tion of trade mark leg­is­la­tion, Trade Mark Act No 8 of 2015. which has spe­cif­ic pro­vi­sions to deal with in­fringe­ment, bor­der en­force­ment mea­sures and coun­ter­feit­ing. There have been move­ments in the right di­rec­tion lo­cal­ly in dis­rupt­ing some of the in­com­ing coun­ter­feit ac­tiv­i­ty.

Much more re­mains to be done, par­tic­u­lar­ly in re­la­tion to so­cial me­dia ac­tiv­i­ty.