COVID-19 and Brand Protection

Posted on 26 January 2021

COVID-19 has presented a number of challenges for IP owners globally in relation to their IP portfolios. In the early stages of the outbreak, there was a range of responses from national and regional IP offices, reflecting its spread, with many adapting their practices and, in some cases, suspending compliance with time limits.

Alongside the impact on IP filing programmes and disputes, there have been a range of other issues for IP owners to consider relating to their approach to trade mark clearance, maintaining use requirements, dealing with infringements, and their IP transactions. In our Mishcon Academy Digital Session on 21 May 2020, we discussed the impact of COVID-19 on brand resilience and the steps that businesses could take to improve their position.

Brand identity and advertising

From a marketing perspective, brand owners have had to consider carefully how to market and advertise their products during the pandemic. Many have adopted creative promotional strategies, and used their manufacturing capabilities to produce new products, including to aid the response to COVID-19. With opportunities as well as risks in this agile approach to branding, it has become ever more important that marketing and legal teams work together closely to consider the IP perspective.

From a regulatory perspective, the Advertising Standards Authority (ASA), responsible for the UK's self-regulatory system, has taken steps to prevent ads that exploit or mislead consumers during the chaos of the crisis, and has provided guidance in the specific context of gambling advertising during the lockdown period. 

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Surge in counterfeit and fake goods

The pandemic has seen an increase in online infringement involving counterfeits and unlawfully traded parallel imports, as consumers focus on online shopping and in the face of disruptions to existing supply chains. In April 2020, Europol and the EUIPO issued a report focusing on how counterfeiters were trying to profit as a result of the pandemic, and the UK National Cyber Security Centre announced it had removed over 2,000 scams, including 471 fake online shops in relation to COVID-19 related services.

As always with counterfeit issues, rights owners need to take swift action, both from a criminal and civil perspective, including working with the relevant authorities and industry bodies. The UK Courts have continued to hear cases throughout the pandemic, and injunctive relief is a particular remedy that rights holders may wish to pursue in these circumstances. Additionally, victims of counterfeiting or other such scams may also wish to consider the option of being a private criminal prosecution against the perpetrators.

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With face masks or "coverings" now compulsory in most public indoor settings in the UK, they have swiftly become part of our everyday lives – and outfits. It was therefore also perhaps inevitable that counterfeit or otherwise unauthorised designer face coverings would start appearing. These products can be damaging to the exclusivity of designer brands, particularly due to their prominent positioning on the face.

There are two types of unauthorised designer face coverings which brands are likely to encounter. The first are counterfeits; straightforward "fakes" which are copied directly from a well-known designer print, most likely manufactured and sold by experienced counterfeiters with established trade channels who have simply expanded into a new product line. The second type of unauthorised face coverings are those made from genuine repurposed fabric. This could be a designer scarf, a coat lining, or even designer fabric sold for the purpose of home furnishings. These are not "counterfeit" per se as the underlying material is genuine – however that is not to say that they are legitimate, or that brand owners can't do anything to stop their sale.

These unauthorised products raise various issues in relation to IP enforcement. For example, whilst counterfeits are straightforward to deal with, there may be more issues where the product may embody a well-known print or pattern, without adopt a brand insignia or label, i.e., 'imitation' products. Sales of repurposed face coverings raises issues relating to exhaustion of IP rights.

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