Knock it Off | Protect Your Brand From Rip-offs
WORDS | Marine Guillou, Senior Associate and Alexis Keating, Lawyer at Phillips Ormonde Fitzpatrick Lawyers
Your business’ intellectual property is a valuable asset worth protecting. When knock-offs of your product enter the market, it is important to understand your intellectual property rights and enforcement options. These may include sending a cease and desist letter to the infringer and seeking removal of its product listings from online marketplaces.
A FEW TIPS
Your fashion brand is a core asset of your business, and so too is your other intellectual property (IP). What do you do then when a knock-off of your product enters the market? Let others enjoy the fruits of your labour? No. Budget allowing, you enforce your intellectual property the smart way. Here are a few tips on how.
1. Identify the infringer.
Purchase a sample of the infringing product. If the product is sold online, take screenshots of the website. If the product is sold in-store, consider taking photos of the product display. Either way, ensure you obtain a receipt showing the trading entity so you can trace the infringer.
2. Don’t publicly allege infringement on social media
Doing so can expose you to a range of liabilities, including for defamation, injurious falsehood and misleading and deceptive conduct. Restrain your inner keyboard warrior.
3. Obtain advice from an IP specialist.
Fashion can be protected under a number of IP regimes. For example, you can protect the name and logo of your brand by registering them as trade marks. You can also protect the visual appearance of your products by registering them as designs. Patterns, drawings, labels, logos and other marketing material may be protected under copyright.
Your IP lawyer/ attorney will help you understand your IP rights and advise on your enforcement options, including whether you have grounds to send a cease and desist letter.
4. Send a cease and desist letter
The content of the letter will depend on factors like:
your IP rights;
the nature and extent of the infringement;
your relationship with the infringer; and
whether they are based in Australia.
Such letters commonly request a statutory declaration setting out details of the infringement, compensation or an account of profits, delivery up or destruction of the infringing goods and undertakings to stop the infringing conduct.
5. Do not make unjustified threats
It’s important not to allege infringement of your intellectual property, without first consulting your legal advisor. Unjustified threats of infringement proceedings may land you in court.
6. Seek removal of the infringer’s product listing from online marketplaces and social media
Certain online marketplaces, like eBay and Alibaba, and social media like Facebook or Instagram offer mechanisms for the removal of listings that infringe IP. Remember, however, to take screenshots of relevant webpages before seeking their removal.
7. Enlist the help of the Australian Border Force
If knock-offs of your products are widespread, consider lodging a Notice of Objection with Australian Border Force. This will empower them to seize imported goods that infringe your copyright and registered trade marks.
8. Be proactive: register your IP
Some types of IP, such as trade marks and designs, are best protected through registration. Speak with your IP lawyer or attorney about the steps you can take to protect your existing and potential IP.
If you require further information, or wish you would like arrange a free consultation to discuss your needs, please contact Marine Guillou at Phillips Ormonde Fitzpatrick Lawyers, via firstname.lastname@example.org