The “Ten Commandments” for Developing and Implementing an Effective Brand Protection &...

Contents

• Introduction…………………………………………………………………………………………………………………....3 • Thou Shall Not Overly Complicate…………………………………………………………………………………....4 • Thou Shall Not Negotiate ……………………………………………………………………………………………......5 • Thou Shall Not Compete…………………………………………………………………………………………………....6• Thou Shall Not Rest on One’s Laurels……………………………………………………………………………......7 • Thou Shall Not Think That One Size Fits All……………………………………………………………………..8 • Thou Shall Not Ask For Too Much…………………………………………………………………………………….9 • Thou Shall Not Be Inconsistent……………………………………………………………………………………….10 • Thou Shall Not Interfere…………………………………………………………………………………………………11 • Thou Shall Not Think That You Can Stop All Online Sales………………………………………………12 • Thou Shall Not Go It Alone……………………………………………………………………………………………...13 • Background……………………………………………………………………………………………………………………...14 • About Legal IQ…………………………………………………………………………………………………………………..15

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Introduction

Thou Shall Protect Your Customers & Thou Shall Protect Your Brand

For centuries counterfeits have presented a serious challenge for the consumer brands. Counterfeiting is not just about losing money on illicit sales, but the public safety and health is also put at risk, because the counterfeiter is not really bothered about safety features.

One of the main reasons for any organisation to have in place an anti-counterfeiting programme is to ensure the safety of your customers and consumers.

In addition, counterfeit goods reduce consumer confidence and if the trust of your brand were to get tarnished, then the overall value of the brand would be lowered, resulting in lost revenue.

Brand protection is essential for every organisation globally and you need to do all you can in order to protect your customers safety and revenue.

With new risks emerging daily from counterfeiters, online threats, grey markets, cybersquatters and supply chain violations, industries grapple with how to deal best protect your organisations from not only a damaged brand but lost revenue.

Based on an Legal IQ interview with Lars Henriksson, Corporate Counsel, Global Intellectual Property from Husqvarna, ahead of the 8th Annual Brand Protection & Anti-Counterfeiting Conference, taking place the 29th – 31st October 2013 in Munich the following e-book is a set of “commandments” to abide by to develop and implement a successful brand protection and anti-counterfeiting strategy.

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Thou Shall Not Overly Complicate

Thou Shall Not Complicate: When it comes to brand protection, there are so many various techniques, for instance with holograms, infra-red markings or RFD transmitters. I think one of the key lessons that I've learned during my years here at Husqvarna is don't overly complicate that type of protection, especially if the customs official would need a lot of gadgets in order to detect or distinguish something from being counterfeit from being real. Make sure you think about what is practical and simple. A lot of the techniques out there could be very suitable for other products, but what concerns us is always that we would complicate things for the ones in law enforcement that are trying to detect and find counterfeit. And also give them and even ourselves a false feeling of security. You can imagine if you were to combine all the various technique and technologies that are out there, a customs official would have to have a tool belt weighing 15 kilos+, with various devices and gadgets that he would need in order to detect counterfeits. And not only that, the customs official also needs to bear in mind which brand is using what protection. In line of that is also, to think what kind of information I communicate to customs officials. And I would say that you should never have more than between three to five key features that they should be on the lookout for, because if you go into an overly complicated way of distinguishing and detecting, then they will also have problems in bearing all this in mind.




Thou Shall Not Negotiate

Thou Shall Not Negotiate: Don't make deals with counterfeiters. This is especially important if you have already submitted evidence or filed charges at any kind to the law enforcement community (police or prosecutors or customs) - and then enter into a deal with the counterfeiter by saying that if you manage to throw all these products out, and if you pay me this amount of money then I'll let you go. Now, if you do that, you will never ever get assistance, at least not ever from that particular law enforcement body. Again, because something they would be extremely annoyed with is that you would give them evidence of a crime and ask them to take action, and then, when they turn around and look for aid from you as rights holder, as expert witness or providing them with a statement, and there is no longer any case, they will be very, annoyed. So you need to be a reliable victim, in fact.




Thou Shall Not Compete

Thou Shall Not Compete: In the case of counterfeiting and brand protection sometimes your market competitor can be your greatest ally, as you both have a common aim of protecting your brand and combatting the counterfeiter. It is not common to have agreements in place, but there are a few competitors we have done raids together with, in which we provided our investigating team and they provided theirs. Since you are also talking about intellectual property, you will also have to show authorities powers of attorney and often the case is that it goes much faster if each party will use their own people that they're comfortable working with, and then join forces. It will always a bit complicated with cooperation and how close you are allowed to work due to competition law issues. But if there would be a raid and we find that there is another brand there instead or as well as ours, we will of course inform those rights holders, and give them the opportunity to also enter in with their own rights. It's almost better that the crime is committed is considered as severe as possible, because that would mean that the counterfeiter that is grabbed during that raid will face harsher legal repercussions, than they would just from our side.




Thou Shall Not Rest on One’s Laurels

Thou Shall Not Rest on One’s Laurels: Brand protection is always a moving target. You have got to keep your ear to the rails, as it were, because counterfeiters will change. One should always try to keep one step ahead rather than one step behind, even if it is extremely difficult to do that. For instance, when it comes to taking preventive measures, you should always try to think a few more steps ahead, what will the counterfeiters be detecting and how do we change it again when they have detected this particular technique. You can't just say okay, we'll put in a brand protection gadget or we put hidden marking on our boxes and then we can just sit back and everything will be hunky dory. That's not the case. You will always have to try to keep track of the trends and how they are changing. One thing that I find with a lot of counterfeiters is that they are pretty lazy. They will do whatever keeps working and they will change as few things as they have to until they reach that point, where everything that has that particular feature will be caught. Then they start changing their approach. What you have to do is always have the foresight to try to anticipate what will be the next probable change in counterfeiters behaviour. It's a little bit like playing chess, in a sense, because you need to try to see a few moves ahead.




Thou Shall Not Think That One Size Fits All

Thou Shall Not Think That One Size Fits All: When determining a global strategy you should never think that “one size fits all”. There are some parts of the world where the customs works brilliantly, however you can't have the same approach in these countries as you would in an emerging market, which doesn’t have the resources or knowledge. And sometimes not even the knowledge or the tradition of it. For instance if you look at China their first IP rights legislation came about approximately 30 years ago. They have not had that much time to get accustomed to the idea of intellectual property. It's something that's quite new to them. And what you can and should do is to aid them and try to also have an understanding for their particular problems in their particular regions. Also try to tailor make your efforts in relation to different territories, because there are some territories that you don't need to do a lot of effort, and some in which you will have to basically invent the wheel, in a sense. If that works for you.




Thou Shall Not Ask For Too Much

Thou Shall Not Ask For Too Much: I think that is an important thing, especially as some countries are new to the concept of IP-rights. I was talking to a representative from the Chinese Government, and he was saying that everybody is saying how incredibly complicated it is to litigate in China, but as a Chinese, I would have just as many problems if I were to litigate in France, which is absolutely right. It is always complicated to litigate somewhere else than in your own country. It's always going to be difficult to do that. Countries in which we experience problems very often have very modern legislation. What they don't have is the experience and resources. That is something that one

needs to be very aware of and not to grasp for too much, because they will most often try to do as well as they can. That is also why it's important to have good connections and to establish and maintain good relationships with the national authorities on various levels. Also it is important to talk to people in the prosecuting field. Identify which prosecutors in your country are working with IP relations, with IP crimes, and discuss with them what their international cooperation looks like and whether one can then get the aid. At least, this will enable you to establish a network of contacts. And finally look at what kind of product do you have and what is the most efficient way of protecting that particular product. For us it is mostly the chainsaws, brush cutters and the like that would be counterfeited. If you have much smaller items, such as headphones and stuff like that, then brand protection technologies might be very good for you to have in order to identify and establish fake/genuine at the scene once customs have made a seizure. If you seize shipments of 30,000 items then it's easier to establish what is genuine and what is not. In these situations technologies might be good. But for the boxes themselves are a good protection and measure in relation to the quality and look. Counterfeit boxes will often have spelling errors, or wrong looing serial numbers and the like. Also important is you have to have also very clear thoughts about how will your products be moved; how are they going to be distributed and sold and where are they going to be sold. Shipping routes, which harbours that are used, which carrier etc, are very valid and vital information for customs.




Thou Shall Not Be Inconsistent

Thou Shall Not Be Inconsistent: For instance, if you have a packaging box that is glued, all boxes should be glued. You should never staple it. And if you do staple it, you should staple it in the same kind of manner and pattern always. Be consistent. You should try your utmost not to be inconsistent when it comes to the content in the packaging box. If you have, for instance, a tool kit that you send with your product, it should be the same tool kit. It should not be different tool kits for the same product. Differences for different regions is fine, as long as these differences are consistent. For instance all products for the US market will be consistent even if the European version is different. But you have to be able to establish that all the contents of the box is the same. This will make determination whether a product is fake or genuine so much easier for everyone involved. Be consistent in your contacts with the authorities. For instance, when you present an evidence package for law enforcement, let's say for the AIC in China, you should be clear about what you need to provide the AIC from the outset. And you will give them the same kind of information every time so that they will feel confident and comfortable and trust you when you approach them submitting a complaint. I think that this is very important too, in order to build trust and forge a collaborative relationship with them.




Thou Shall Not Interfere

Thou Shall Not Interfere: One needs to be very aware of the fact that, once you have turned something over to local authorities, then the case is no longer in your hands. That is something that is important to bear in mind. You can always make suggestions, but be very careful with meddling into the police business. If you have turned a case over to the police, you will have to also accept that the police will handle it. They are the ones that will run the case. You will aid them as the product expert. You will need to provide them with the information that they will request. You can give them pointers, you can give them suggestions, but not in a way that can be regarded as interfering.




Thou Shall Not Think That You Could Stop All Online Sales

Thou Shall Not Think That You Could Stop All Online Sales: The internet is problematic and one of the largest problems to businesses, as it creates a direct link between the counterfeiter and the consumer. Auction sites are very important hunting grounds for counterfeiters. I think that sometimes you will have to settle with that you close the auction down and you make it as difficult as possible for the counterfeiter to reach out to their consumers, to their potential buyers. At the same time the internet is also a fantastic hunting ground also for

us. So one also has to sometimes consider keeping a particular site open for a while so that we can gather more intelligence about this particular seller. The biggest problem is by far that there is no liability for the providers, at the moment at least. For example you could be on eBay or equivalent site, and you have recurring individuals that will be selling counterfeits over and over and over again. And the auction site don't have any obligation to make sure that this particular individual doesn't resume his sales. As service providers, they don't have any monitoring obligation due to the so called Safe Harbour doctrine. When it comes to online, don't automatically panic, because a lot of these sellers are trying to come across as being far much bigger than what they actually are. But online of course, is a huge challenge. And I think one thing is to be a nuisance to counterfeiters. You need to be active, monitor auction sites, closing auctions down, requesting notices and take-downs. It's very tedious and it's very time-consuming, and it can be very expensive, but I think that's the only way at present to go when it comes to counterfeit online at the moment. Try to become as difficult a target as possible. Then, hopefully, by your other preventive measures, such as training customs officials, have customs applications in place etc, counterfeits will be caught in transit, when they are being delivered.




Thou Shall Not Go It Alone

Thou Shall Not Go It Alone: Make sure to build and maintain your external and internal network. When you work and inform about the problem of counterfeit within your own organisation, you need to raise awareness of the problem and that there is an issue. You need to do this in the organisation as a whole. What can everybody contribute in in order to help out? For instance, that can be design changes if there are new models, how the packaging looks, which carriers do you use, how does the pallet look like etc. A lot of things like that could make things more difficult for counterfeiters to follow suit on. You also have to rely on the information that your various sales organisations will give you. They are at the forefront of this battle. They will see and encounter the direct repercussions and direct consequences of counterfeit which this illicit competition will cause them. Very often they will be the first to understand that there are counterfeits in circulation. Make sure you use the Internet since it is a great tool in order to understand more about what products are in circulation and which ones they are, and which markets the counterfeits are targeting. The thing to also bear in mind is that if you have a broad range of product, such as Husqvarna have, then there will be different products, different models being counterfeited in different territories of the world, because the products will be more or less popular in the various regions. The ones that are more popular, those are the ones they will counterfeit. So I think that keeping a very good communication with your sales and the various sales teams is of very big importance. Ensure your regional sales managers know who to approach within your company when they detect or encounter a counterfeit product. Also make sure they know what you want them to do – buy samples, secure paper trails, save screen dumps of marketing etc.




Background: About Lars HenrikssoN

Lars Henriksson Corporate Counsel, Global Intellectual Property Husqvarna

Lars attended law school at Lunds University, Sweden. After graduation and after serving as a recorder for the administrative court of Malmö, he worked at an assistant lawyer at a law firm in Malmö, Sweden. Before starting his current position at Husqvarna AB in 2011, he worked as a legal counsel for the Swedish Performing Rights Society (STIM) from the year 2000 enforcing and licensing music rights on the Internet, television and radio.




About Legal IQ What is Legal IQ? Legal IQ www.legaliqonline.com is an online community dedicated to providing 42,000 legal professionals with news, information resources, networking and most significantly, industry events. Legal IQ is a division of international, B2B conference and e-learning company IQPC ltd. IQPC has been running successful legal events for over a decade, but it's only now that we've decided to move our community and resources on to a centralised portal. Why? To facilitate networking and user interaction! What topics do we cover? Generally, the topics we cover on Legal IQ correspond with our legal events. These cover the following themes: • Patent strategy • eDiscovery and Information Governance • Corporate Counsel • IP and Brand Protection • Contract Risk Management • Anti-Counterfeiting

The 8th Annual Brand Protection & Anti-Counterfeiting Conference (29 – 31 October 2013, Munich) is interactive, cross industry forum where you gain the knowledge to implement informed decisions and strategies to minimise brand abuse globally. www.brandprotectionevent.com

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The “Ten Commandments” for Developing and Implementing an Effective Brand Protection &...

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Transcript of The “Ten Commandments” for Developing and Implementing an Effective Brand Protection &...