Ajankohtaista IPR-alalta

Action against copying

24.06.2009

The article was originally published in the Handbook of European Intellectual Property Management by Kogan Page in association with European Patent Office, June 2009. Author: Ari-Pekka Launne, LLM, Attorney-at-Law, Kolster Oy Ab.

Human beings learn new things by copying others. Perhaps this feature never really disappears and that is good. We pass on skills and knowledge for those to come. But in respect of intellectual property (IP) rights copying is not only an existing practise, it is a threat for right holders and a challenge for the legal system. Almost everything can and will be copied, and even more so if we are discussing best-selling products.

Copying is an existing fact, and is the result of another feature common for us human beings: laziness. It is, of course, much easier to copy somebody’s work than to create something new. The luxury items may be copied because of great expectations for profit, but more often you’ll find copies of common items used in everyday life.

Where is the threat for right holders? In short, it lays in ruining the reputation and goodwill of brands, as copycats do not bother to consider the quality or safety of their products. The materials used may be whatever is available, and there is no liability towards consumers. It is usual that the brand owner get the blame – after all, it’s their mark and they can be identified, whereas the copycats disappear the moment they have sold you their product. In the illegal business of counterfeits there are no such concepts as guarantee or product liability.

How about the challenge for the legal system, then? In most cases the significance of the crime is rather small if we consider only the economical value of one item copied. The plaintiff is usually not willing to sue the copycat for fraud if the interest is just a few euros. It’s may also be hard to collect damages or compensation for legal fees, even if the copycat is caught. This results in copying being a low-risk business, as long as the factory is not found. How to provide the right holders with protection they deserve and seek for?

Luckily the overall picture is not that bad after all. While the importance of IP has been growing, so also the means to enforce these rights have developed greatly during the last years. Naturally, it is up to the right holder to take action, and this calls for better understanding of what can be done and when it needs to be done. And remember that best practises can be copied as well.

In any field of life, actions can be divided in three phases: planning, doing and supervising. This applies for protecting your IP assets and making tangible results from your rights. The following can be put to use on any field of activities, and applies universally.

Plan carefully

It is often so that the first and perhaps the most important phase of IP protection is completely neglected, mainly as it seems to be expensive and bringing the payback later, if at all. However, the value of work well done in this phase actually gives the best results in respect of money spent and time consumed when enforcing the rights.

A perfect strategy for protecting the IP assets takes into account the actual needs of the right holder, economical realities and resources available. It bridges together the known facts of the field of business one is acting on and available means to accomplish what one plans to do. While it is undeniable that one needs to make choices, these choices must be based on correct information.

The following steps can be found in the planning your IP strategy. First, get familiar with the field you are playing on. Where do you manufacture your goods, advertise them and sell them? How about your competitors? The answers to these questions define the geographical scope of protection you may need.

Then investigate what means are available for protecting your rights. Do you plan to be an active or passive player? How much money can you budget for these matters? Be sure to understand that a well-grounded fortress of IP rights is less expensive to build if the work can be done step by step in good time, and that protecting this fortress is less expensive than costs that may occur when no attention has been paid to protection at all.

Finally, decide what will trigger action against a copycat, when you find one. You can and you should make a general plan of action that you will put into effect in these cases. Some tactical issues may also be considered already at this time, although the chosen tactic for acting against an actual opponent always depends on the case at hand.

Having answered these seemingly simple questions you are already well on your way to formulating your company’s IP policy. Putting it in writing is the final step. Of course, as the world around you chances, you need to adjust you strategy every now and then, preferably regularly. But once you have made effort to create the strategy, any adjustment is easier to do.

The money-saving tip in this respect is clear. When the strategy and tactics have been established, making decisions on protecting and enforcing IP rights is more cost efficient in the future.

Secure your rights

The plans you made in the previous phase have given you the framework for securing your rights and you are ready to take this next step. The overall plan defines where and by what means you will make sure the copycat faces problems if they try to make money by copying your products.

My advice here is simple and straight forward: when possible, register your rights. If registration is not possible, document your use of a trade mark, design or domain name. Save material showing the use, and both the geographical scope and time span of use. In this way you lay the groundwork for enforcing your rights. With well-organized material this is easier and thus cheaper than if collecting of material begins only when you need it.

Enforce your rights

Now that you have planned your strategy and secured your rights you may feel that the mission is accomplished. Unfortunately, it is up to you to supervise the market and enforce your rights. Failing to do this may ultimately lead to loss of both rights and money spent on them. To avoid this you need to be alert all the time.

Watch the registers and react when someone is trying to register something that may limit the scope of your protection. While copycats hardly try to register marks similar to yours, you may find yourself in a position where actions of third parties have limited your possibilities to take action. Here, the main issue is maintaining the strongest protection available.

Monitor also the actions of your competitors, business partners and customers. Running public awareness campaigns may lead to good results, as well as co-operation with authorities such as the customs authorities or the police.

React immediately when copies are found. When you first enforce your rights you may find it to be hard work without much effect, but be consistent. Many rights holders have confirmed that reacting even to small amounts of counterfeit goods has affected the overall attitude of the copycats. Remember that those people are lazy by nature. Since it makes no difference to them whose products they copy, they soon move on to those marks or products that are not so well protected as yours.

Finally, try to take action against the source of the copies, not only the retailers.

By reacting to infringements you let the copycats know that it’s not worth while copying your products. In time your reputation in this respect works on your behalf.

Conclusion

Although almost everything can and will be copied, right holders may fight this problem effectively by planning their IP strategy carefully, securing their rights by registration and enforcing those rights against copycats. This calls for consistent work but it pays off in helping to maintain the high value of the brand.