18 March 2011
Protecting brands is one of the biggest challenges facing general counsel today.
Protecting brands is one of the biggest challenges facing general counsel today. There are myriad ways that IP can be infringed, and as companies continue to expand into less developed markets, rights become even harder to enforce. In some cases, lawyers have to protect their company’s IP in the context of enormous structural shifts within their industry. For example, Thomson Reuters had to harmonise its approach following its £8.7bn merger in 2008, in particular how it coped with US trolls.
Meanwhile, over the past five years the Financial Times has changed its business content model from free to metered access - a move that has had implications for how it protects its copyright. General counsel Tim Bratton explains how he deals with IP issues and why it is important to know how to work with social media.
Counterfeiters are normally associated with luxury brands, such as FTSE100 fashion group Burberry, which has fought lengthy but ultimately successful battles to halt the dilution of its brand after a number of its markets were flooded with fakes. But luxury goods is just one sector. Others that are targeted regularly include the pharmaceuticals industry with drugs such as Viagra or insulin; food and drink, especially premium alcohol brands; software;
in-demand consumer electronics such as iPhones; and even electrical devices such as the switches found in kettles.
“They really will counterfeit anything,” one partner who works extensively in brand protection notes wryly.
But IP laws are not homogenised worldwide, forcing often differing approaches and requirements depending on the market the company is operating in. According to one IP barrister, developing countries such as India and China, while potentially massive markets, “remain the Wild West” when it comes to enforcing rights. China, for example, has only had IP laws in place for the past 30 years or so, since it started to move towards a more Western economic model, and violations abound. Indeed, counterfeiting and piracy form large parts of some local Chinese economies, despite efforts by the national government to crack down on IP infringement.
The problem of China looms large in the experience of Dyson chief IP counsel Gill Smith. Although the Chinese authorities are starting to respond to the concerns of Western businesses - IP protection is now high on the political agenda - the difficulties of combating patent and trademark infringement are manifold. Delays built into the Chinese system have left products open to registration by Chinese manufacturers. Dyson’s robust approach brought it a rare victory in a design rights case earlier this year, but there is still much work to do, says Smith.
IP infringements in the UK are largely pursued through the civil courts despite various, often controversial, attempts to make infringement a criminal offence.Those working for the London 2012 Olympic Games, however, have a unique perspective on the criminalisation of IP infringement. Two new pieces of legislation, along with another that should come before Parliament by the end of this year, mean that in three areas infringing the Olympic brand is (or will be) a criminal offence. These include ticket touting and counter-feiting (producing and selling unofficial Olympics, Paralympics and London 2012 merchandise). The two acts that criminalise these activities are the Olympic Symbol etc (Protection) Act 1995 and the London Olympics and Paralympic Games Act 2006.
The latter act also stipulates that the UK must introduce legislation that restricts advertising and street trading around the sites of the Games, thereby stopping people and businesses from associating themselves with the Games without paying sponsorship fees. That legislation is still in draft form.
We speak to London 2012’s senior brand protection managers about pursuing criminal and civil actions to stop IP infringements, and discuss why and how they are seeking to protect the Olympic brand so vehemently.