Coun­ter­ing IP In­fringe­ment on the In­ter­net

Norway-Asia Business Review - - Contents - By Wi­ram­rudee Mokkhavesa

The rise of mo­bile tech­nol­ogy—from lap­tops to smart phones to tablets—has ush­ered in a shift among con­sumers away from shop­ping at brick-and-mor­tar stores to­ward pur­chas­ing prod­ucts on­line. Brand own­ers, in re­sponse, have moved huge re­sources to­ward on­line sales strate­gies. So it should be no sur­prise that coun­ter­feit­ers, too, have mo­bilised to take ad­van­tage of the grow­ing mar­ket for prod­ucts on the In­ter­net. As more and more com­merce oc­curs on the Web, the num­ber of fakes be­ing sold on­line has also dras­ti­cally risen. In ad­di­tion to this global trend, lo­cal events here in Thai­land may also be ex­ac­er­bat­ing the on­line in­fringe­ment sit­u­a­tion. Thai­land has been mired in po­lit­i­cal un­rest since Novem­ber 2013, leav­ing the po­lice with less time to de­vote to in­tel­lec­tual prop­erty in­fringe­ment mat­ters. There has been a no­table de­crease in the num­ber of in­tel­lec­tual prop­erty raid ac­tions and Cus­toms cases that have been ini­ti­ated since the po­lit­i­cal un­rest be­gan. In this con­text, in­tel­lec­tual prop­erty own­ers need to con­sider what ac­tions they can take—at their own ini­tia­tive—to re­main vig­i­lant in their strug­gle against coun­ter­feit­ing, while wait­ing for the po­lit­i­cal sit­u­a­tion in Thai­land to sta­bilise. One tac­tic that can reap im­me­di­ate re­wards is to re­de­ploy re­sources to counter on­line in­fringe­ment.

To as­sist brand own­ers in th­ese ef­forts, Tilleke & Gib­bins has a ded­i­cated in­ves­ti­ga­tion team fo­cused on iden­ti­fy­ing and dis­rupt­ing IP in­fringe­ment on­line. Our team fo­cuses on the two core el­e­ments of on­line in­fringe­ment:

Cy­ber­squat­ting, where in­fringers use a regis­tered trade­mark be­long­ing to another party as their do­main name or part of their do­main name; and

The sale of fake goods via spe­cific web­sites.

Our in­ves­ti­ga­tion process un­cov­ers de­tailed in­for­ma­tion about the in­fringer and the na­ture of the in­fringe­ment. With this ev­i­dence in hand, we work with the brand owner to send a cease-and- de­sist let­ter to the in­fringer, or­der­ing them to im­me­di­ately stop their in­fring­ing ac­tiv­i­ties. For high-value tar­gets, a warn­ing let­ter may not be suf­fi­cient. Us­ing ad­vanced in­ves­tiga­tive tech­niques, we col­lab­o­rate with the IP owner to un­earth de­tailed in­for­ma­tion about the in­fringer in or­der to learn more about the source of the goods. This type of in­ves­ti­ga­tion can help to trace on­line sup­ply chains, lead­ing to the dis­cov­ery of hubs for the dis­tri­bu­tion of fake goods. While th­ese in­ves­tiga­tive tech­niques are im­por­tant, we also en­cour­age IP own­ers to pur­sue an in­te­grated ap­proach to­ward stop­ping on­line in­fringe­ment. This can be most ef­fec­tive when ac­tions aren’t limited to re­ly­ing solely on in­tel­lec­tual prop­erty law, but in­stead bring to­gether a range of le­gal op­tions to dis­rupt in­fringers’ ac­tiv­i­ties. The sale of il­le­gal med­i­cal de­vices on­line pro­vides a good ex­am­ple of how such an ap­proach can be suc­cess­ful. Through our in­ves­ti­ga­tion team’s rou­tine mon­i­tor­ing of on­line in­fringe­ment ac­tiv­i­ties, we be­came aware that a large num­ber of med­i­cal de­vices were be­ing pro­moted on the In­ter­net as le­git­i­mately cer­ti­fied in Thai­land, when, in fact, they have only been cer­ti­fied in other coun­tries. Such a claim is not a vi­o­la­tion of in­tel­lec­tual prop­erty law, but it does open the door to other types of ac­tions un­der other laws. To ad­dress this is­sue, the le­git­i­mate in­tel­lectu- al prop­erty owner can pur­sue a claim of reg­u­la­tory in­fringe­ment by tak­ing ac­tion against the seller for ad­ver­tis­ing the sale of food, medicine, and med­i­cal equip­ment us­ing un­true in­for­ma­tion that is de­cep­tive to con­sumers. This ap­proach can be sup­ported by the find­ings of Red Case Sor. 33/2554, in which the court deemed that such an act con­sti­tutes an of­fense un­der Thai­land’s Act on Com­puter Crimes and found the de­fen­dant guilty. This com­bined le­gal and reg­u­la­tory ap­proach can be eas­ily repli­cated across a wide range of tightly reg­u­lated prod­ucts, in­clud­ing food, drugs, agri­chem­i­cals, and more, in or­der to pro­vide new op­por­tu­ni­ties for IP own­ers to de­fend their rights. A well- co­or­di­nated on­line-mon­i­tor­ing cam­paign— one that bridges the gap be­tween in­tel­lec­tual prop­erty law and other reg­u­la­tory op­tions— can be a very cost- ef­fec­tive strat­egy for brand own­ers to un­cover and pre­vent in­tel­lec­tual prop­erty in­fringe­ment on the In­ter­net. The Tilleke & Gib­bins in­ves­ti­ga­tion unit ac­tively mon­i­tors on­line in­fringe­ment ac­tiv­i­ties and re­ports sus­pi­cious ac­tiv­ity to many large IP own­ers. If you would like Tilleke & Gib­bins to mon­i­tor your brand, please con­tact Wi­ram­rudee (Pink) Mokkhavesa at wi­ram­[email protected]

It should be no sur­prise that coun­ter­feit­ers, too, have mo­bilised to take ad­van­tage of the grow­ing mar­ket for prod­ucts on the In­ter­net.

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